UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 8/29/2018

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

ISSUES APPLICANT MUST ADDRESS:  On August 28 and 29, 2018, the trademark examining attorney and Marsha Hoover discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

SUMMARY OF ISSUES:

 

• Identification of Goods and Services Amendments Required

 

IDENTIFICATION OF GOODS AND SERVICES AMENDMENTS REQUIRED

 

The wording “monitoring the Internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud” in Class 42 is overly-broad and indefinite and must be amended.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

This is very similar to a previously acceptable Identification in Class 45 that has since been deleted.  See http://tmng.gov.uspto.report/tmngidm/public-view-record.html?referrer=public&recordId=60298.  Specifically, while computer security services and electronic monitoring services are classified in Class 42, while physical security services are properly classified in Class 45.  Here, while some of the services such as “monitoring the internet” and “public electronic databases” appear to be limited to computer or electronic security services, the other wording could encompass physical monitoring or security of databases and servers.

 

Based on the full sentence of this wording and the other wording in the Identification, the examining attorney is suggesting wording in Class 42 only.  However, if applicant offers services of a different nature (e.g., physical security monitoring), applicant must clarify the nature of this monitoring and classify them accordingly.

 

Applicant may adopt the following Identification of Goods and Services, if accurate:

 

Class 9:           Computer application software for accessing cloud-based software for use in managing online accounts, online subscriptions, personal information, and for use in monitoring internet websites and online publications for personal information, computer application software for accessing information obtained from credit report and credit score monitoring, and for providing tips and information concerning cyber threats, identity theft and fraud; computer application software for use in accessing assistance with fraud and identity theft protection services and closing or rehabilitating compromised accounts

 

Class 42:         Software as a service (SaaS) featuring software for use in electronic storage of data; software as a service (SaaS) featuring software to assist in tracking, managing, and reporting, credit scores, and account information; software as a service (SaaS) featuring software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft; software as a service (SaaS) featuring software for scanning a user's email to generate a list of the user's online accounts; electronic monitoring of personally identifying information to detect potential identity theft via the internet; computer security services involving the tracking, monitoring, and reporting regarding consumer credit reports and changes thereto for purposes of protecting data and information from unauthorized access to prevent data theft, identity theft and fraud; electronic monitoring of credit card activity and providing alerts and notifications concerning possible fraud and identity theft for fraud protection purposes related thereto;  [specify services in Class 42, e.g., electronic monitoring of personal information and credit activity] by monitoring the Internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

RESPONSE GUIDELINES AND PARTIAL ABANDONMENT ADVISORY

 

For this application to proceed further for the full list of applicant’s goods and/or services, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, the following services will be deleted from the application:

 

Class 42:         Monitoring the Internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud

 

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

The application will then proceed with the following goods and services only:

 

Class 9:           Computer application software for accessing cloud-based software for use in managing online accounts, online subscriptions, personal information, and for use in monitoring internet websites and online publications for personal information, computer application software for accessing information obtained from credit report and credit score monitoring, and for providing tips and information concerning cyber threats, identity theft and fraud; computer application software for use in accessing assistance with fraud and identity theft protection services and closing or rehabilitating compromised accounts

 

Class 42:         Software as a service (SaaS) featuring software for use in electronic storage of data; software as a service (SaaS) featuring software to assist in tracking, managing, and reporting, credit scores, and account information; software as a service (SaaS) featuring software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft; software as a service (SaaS) featuring software for scanning a user's email to generate a list of the user's online accounts; electronic monitoring of personally identifying information to detect potential identity theft via the internet; computer security services involving the tracking, monitoring, and reporting regarding consumer credit reports and changes thereto for purposes of protecting data and information from unauthorized access to prevent data theft, identity theft and fraud; electronic monitoring of credit card activity and providing alerts and notifications concerning possible fraud and identity theft for fraud protection purposes related thereto

 

See TMEP §718.02(a).  In such case, an applicant may timely file a petition to revive the abandoned services, which, if granted, would allow for the reinsertion of these services into the application.  See 37 C.F.R. §2.66; TMEP §§718.02(a), 1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

Alison.Keeley@uspto.gov

(571) 272-4514

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/29/2018 FOR U.S. APPLICATION SERIAL NO. 88013339

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 8/29/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.