Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 30, 2019

 

 

Introduction

 

This Office action is in response to applicant’s communication filed on 05/03/2019.

 

In a previous Office action dated 11/06/2018, the trademark examining attorney required that applicant satisfy the following requirements:  amend the identification of services and provide a signature for the application.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:  signature provided and requirements for adding two classes.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification of Services – Partial Final – Services in International Class 42

 

Identification of Services – Partial Final – Services in International Class 42

 

THIS REQUIREMENT ONLY APPLIES TO THE FOLLOWING SERVICES IN INTERNATIONAL CLASS 42: “collection … and processing of traffic signal data and transportation corridor performance data, and display and transmission of reports and alerts to others based on traffic signal data and transportation corridor performance data”.

 

The wording “collection…of traffic signal data and transportation corridor performance data” in the identification of services in International Class 42 is indefinite and must be clarified to specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please note, “collection in the nature of systemization of traffic signal data and transportation corridor performance data in computer databases” was properly added in Class 35 in the 05/03/2019 Response.

 

The wording “processing…of traffic signal data and transportation corridor performance data” in the identification of services in International Class 42 is indefinite and must be clarified to specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please note, “data processing services, namely, processing of traffic signal data and transportation corridor performance data” was properly added in Class 35 in the 05/03/2019 Response.

 

Similarly, the wording “display and transmission of reports and alerts to others based on traffic signal data and transportation corridor performance data in the identification of services in International Class 42 is indefinite and must be clarified to specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please note, “telecommunication services, namely, electronic transmission of reports and electronic alerts to others based on traffic signal data and transportation corridor performance data” was properly added in Class 38 in the 05/03/2019 Response.

 

Applicant has already added the suggested replacement language from the 11/06/2018 Office Action; all that is necessary to make the identification definite is deletion of the indefinite language in International Class 42, above, so that the identification reads as follows: 

 

International Class 35:  Acceptable as written.

 

International Class 38:  Acceptable as written.

 

International Class 42:  Traffic and transportation engineering services, namely, providing performance data and analysis based on traffic signal data and transportation corridor performance data and providing related non downloadable reports containing traffic signal data and transportation corridor performance data; electronic storage of traffic signal data and transportation corridor performance data

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or 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 Options

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services in International Class 42 to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  “collection … and processing of traffic signal data and transportation corridor performance data, and display and transmission of reports and alerts to others based on traffic signal data and transportation corridor performance data”.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only: 

 

International Class 35:  Data processing services, namely, processing of traffic signal data and transportation corridor performance data; collection in the nature of systemization of traffic signal data and transportation corridor performance data in computer databases

 

International Class 38:  Telecommunication services, namely, electronic transmission of reports and electronic alerts to others based on traffic signal data and transportation corridor performance data

 

International Class 42:  Traffic and transportation engineering services, namely, providing performance data and analysis based on traffic signal data and transportation corridor performance data and providing related non downloadable reports containing traffic signal data and transportation corridor performance data; electronic storage of traffic signal data and transportation corridor performance data. 

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Shelby Niemann/

Shelby Niemann

Trademark Examining Attorney

Law Office 125

(571) 270-7330

shelby.niemann@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 30, 2019 for

U.S. Trademark Application Serial No. 88032563

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Shelby Niemann/

Shelby Niemann

Trademark Examining Attorney

Law Office 125

(571) 270-7330

shelby.niemann@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 30, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”