To: | CB INTERNATIONAL BANK LLC (mail@rubiolaw.com) |
Subject: | U.S. Trademark Application Serial No. 88032215 - CBI - N/A |
Sent: | August 22, 2019 02:36:27 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88032215
Mark: CBI
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Correspondence Address: |
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Applicant: CB INTERNATIONAL BANK LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 22, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH FOR CONFLICTING MARKS
The trademark examining attorney has searched the Office’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).
· IDENTIFICATION OF SERVICES
· MULTIPLE CLASS APPLICATION REQUIREMENTS
· REPRESENTATION ADVISORY
· ADVISORY – BATCH UPDATING OF US COUNSEL INFORMATION
IDENTIFICATION OF GOODS/SERVICES
The wording “technical research” in the identification of goods is indefinite and must be clarified to indicate the field of research. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. “Update of computer software” has been replaced with “updating of computer software for others”. “Software as a service” needs to indicate the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use. “Cloud computing” needs to indicate “consulting services related to” to remain in class 42 or be moved to Class 09 as “Downloadable cloud-computing software for {specify the function of the software used in cloud computing, e.g., deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform, etc.}”. “Computer virus protection services” is listed twice and one reference must be deleted. “providing computer technology and programming information through web sites” needs slight modification, as outlined below.
Applicant may adopt the following identification, if accurate. Please note that any wording in bold below offers guidance and/or
shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant's version of the identification of goods and/or services which should be
removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold.
09: Downloadable cloud-computing software for {specify the function of the software used in cloud computing, e.g., deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform, etc.}
42: Technical research in the field of {indicate field}; research and development of new products for others; computer programming; restoration of computer
data; updateing of computer software for others; maintenance of computer software; information technology consulting; software as a service
(SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if
software is content - or field-specific, the field of use}; consulting services in the field of cloud computing; computer virus protection services; data encryption
services; computer program replication; computer software installation; data conversion (non-tangible conversion) of computer programs and data; computer virus protection services; providing
information on computer technology and programming information throughvia web sites.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must be represented at the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States. See more about foreign-domiciled trademark applicants, registrants, and parties (click for link).
U.S.-licensed attorneys representing trademark filers must provide all of the following:
ADVISORY – BATCH UPDATING OF US COUNSEL INFORMATION
The TEAS Revocation, Appointment, and/or Change of Address of Attorney form permits an attorney to update address information and add bar information for a batch of applications or registrations. The signature of the applicant is not required if the attorney is not making changes to the representation and merely updating information in the record.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action
/Cassondra Anderson/
/Cassie Anderson/
Examining Attorney
Law Office 103
Cassondra.Anderson@uspto.gov
(571) 272-5595
RESPONSE GUIDANCE