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:  July 19, 2019

 

This application has been returned to examination status to address the following issue.  The examining attorney apologizes for any inconvenience that this might cause.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Requirement of Amended Recitation Maintained

 

The identification of goods is acceptable.  A portion of the amended recitation of services remains indefinite and must be clarified because it is unclear from the current wording exactly what services are used in conjunction with the mark.  See TMEP §1402.01.  The requirement of a clarified identification of goods is maintained and made FINAL. 

 

In particular, “non-downloadable software for analyzing, managing, organizing, operating, monitoring, optimization, orchestration and virtualization of computer networks, data center infrastructure, and IT (information technology) infrastructure; non-downloadable software for analyzing, managing, controlling, monitoring, and reporting developments, events, and issues in data centers and computer networks; non-downloadable software for monitoring, analyzing, routing, optimizing and reporting of network information, data and traffic” must be further clarified.  To remain properly classified in Class 42, the software must by specified as being “providing online non-downloadable software. . .”

 

Please note, descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

Based on the submitted amendment the applicant may adopt the following identification, if accurate (suggested wording appears in italicized print):  

 

Computer hardware; computer network servers; computer network virtualization, orchestration, management, monitoring and optimization software; software for analyzing, managing, organizing, controlling, operating, optimizing and monitoring of computer networks, servers, and computer networking hardware; software for analyzing, managing, monitoring, and reporting developments, events, and issues in data centers and computer networks; software for monitoring, analyzing, routing and reporting of network information, data and traffic in Class 9.

-and-

Providing online non-downloadable software for analyzing, managing, organizing, operating, monitoring, optimization, orchestration and virtualization of computer networks, data center infrastructure, and IT (information technology) infrastructure; providing online non-downloadable software for analyzing, managing, controlling, monitoring, and reporting developments, events, and issues in data centers and computer networks; providing online non-downloadable software for monitoring, analyzing, routing, optimizing and reporting of network information, data and traffic; technical support services, namely, remote and on-site infrastructure management services for monitoring the functionality and performance of computer networks; consulting in the field of computer networking technology and IT (information technology); consulting in the field of cloud computing and data center infrastructure in Class 42.  TMEP Section 1402.01.

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification - Much Ado About Something?, 76 Trademark Rep. 224 (1986). 

 

This issue can be resolved by telephone or by leaving a message authorizing the changes suggested.

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final refusal and requirement applies will be deleted from the application by Examiner’s Amendment:  “Non-downloadable software for analyzing, managing, organizing, operating, monitoring, optimization, orchestration and virtualization of computer networks, data center infrastructure, and IT (information technology) infrastructure; non-downloadable software for analyzing, managing, controlling, monitoring, and reporting developments, events, and issues in data centers and computer networks; non-downloadable software for monitoring, analyzing, routing, optimizing and reporting of network information, data and traffic.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and/or services:

 

 

Computer hardware; computer network servers; computer network virtualization, orchestration, management, monitoring and optimization software; software for analyzing, managing, organizing, controlling, operating, optimizing and monitoring of computer networks, servers, and computer networking hardware; software for analyzing, managing, monitoring, and reporting developments, events, and issues in data centers and computer networks; software for monitoring, analyzing, routing and reporting of network information, data and traffic in Class 9.

-and-

Technical support services, namely, remote and on-site infrastructure management services for monitoring the functionality and performance of computer networks; consulting in the field of computer networking technology and IT (information technology); consulting in the field of cloud computing and data center infrastructure in Class 42.  TMEP Section 1402.01.

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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.  

 

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).

 

If applicant has questions regarding this Office action, please call or email the assigned trademark examining attorney.  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 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. 

 

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(571) 272-9353

jason.turner@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 July 19, 2019 for

U.S. Trademark Application Serial No. 88050546

 

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. 

 

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(571) 272-9353

jason.turner@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 July 19, 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.”