UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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: 9/1/2018

 

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

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

 

International Class 41

 

The wording in this identification is acceptable as written.

 

International Class 42

 

The wording in this identification is acceptable as written.

 

International Class 45

 

Certain terms in the identification are unclear and require clarification because the nature of the services intended is unclear.  Specifically, the wording must make clear whether the applicant is seeking to register a computer action related service in Class 42 or security related service in Class 45.  Lastly, monitoring services in Class 42 typically involve electronic monitoring and observation for quality control purposes. Monitoring services in Class 45 typically involve observation for security purposes. 

 

Following, the examiner highlights those unclear terms through suggestions for better terminology (in their appropriate class) below.  Unclear or indefinite terms in the identification are listed in italics followed by suggested language and corrected classification, if applicable, listed in bold. The portions of the identification that are acceptable as written are repeated as originally listed in the application:

 

Domain name management and recovery services – “Parking domain names for others, namely, providing computer servers for electronic storage of domain name addresses” in Class 42 OR “Domain name management and recovery services, namely, domain name registration services” in Class 45

 

social media username registration, social media management and recovery of hijacked accounts – “Social media management, namely, providing technology consulting in the field of social media; Recovery of computer data, namely, recovery of hijacked accounts” in Class 42  OR “Social media username registration” – in Class 45

 

Brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting –Applicant may amend to the following, if accurate: 

Class 42: “Electronic monitoring of the internet using computers and sensors for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting”;

 

OR

 

Class 45: Intellectual property watch services in the field of brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting

 

brand management online, namely, preparing and sending notices of misuse and removing leaked or stolen content –  the purpose of the services must be further specified for notice and classification purposes. Applicant may amend to the following, if accurate:  “Online anti-counterfeiting consulting, namely, brand monitoring and protection, to protect against counterfeiting, tampering, and diversion, and to ensure the integrity of genuine products and documents by preparing and sending notices of misuse and removing leaked or stolen content” – in Class 45

 

Intellectual property protection services, namely, Internet surveillance and monitoring to detect possible infringement, domain name abuse and cyber squatting, and remediation services - ACCEPTABLE in Class 45

 

social media and digital platforms monitoring to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers, threats of violence, and compliance issues – The nature of the monitoring here must be clarified for notice and classification purposes.  Monitoring for legal compliance purposes are classified in Class 45; however, monitoring for quality control purposes are in Class 42.  Applicant may amend to the following, if accurate:  “Electronic monitoring of social media and digital platforms using computers and sensors for data collection to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers and threats of violence” – in Class 42 OR “Tracking and monitoring regulatory requirements in the field of social media and digital platforms for regulatory compliance purposes” – in Class 45

IN SUM, Applicant may amend to the following:

 

CLASS 41:  Social media security and protection training services

 

CLASS 42:  Software as a service (SAAS) services featuring temporary use of non-downloadable cyber security software for use on social media and digital platforms and providing alerts identifying malicious or dangerous content;  Parking domain names for others, namely, providing computer servers for electronic storage of domain name addresses; Social media management, namely, providing technology consulting in the field of social media; Recovery of computer data, namely, recovery of hijacked accounts; Electronic monitoring of the internet using computers and sensors for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Electronic monitoring of social media and digital platforms using computers and sensors for data collection to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers and threats of violence

 

CLASS 45:  Domain name management and recovery services, namely, domain name registration services; Social media username registration; Intellectual property watch services in the field of brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Online anti-counterfeiting consulting, namely, brand monitoring and protection, to protect against counterfeiting, tampering, and diversion, and to ensure the integrity of genuine products and documents by preparing and sending notices of misuse and removing leaked or stolen content; Intellectual property protection services, namely, Internet surveillance and monitoring to detect possible infringement, domain name abuse and cyber squatting, and remediation services; Tracking and monitoring regulatory requirements in the field of social media and digital platforms for regulatory compliance purposes

 

Note, if applicant accepts the suggested identification(s), Applicant must amend the application to classify the goods or services in the listed International Class.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Identification Manual

 

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.

 

Indefinite Terms

 

Please be advised that each identification must be specific and all-inclusive; therefore, applicant should refrain from using open-ended or indefinite wording.  TMEP §§1402.01 and 1402.03(a). It is recommended that the applicant use common commercial names and terms, when drafting the identification.

 

Amending Identification/Broadening Scope

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  

 

TO EXPEDITE APPLICATION:

 

The issue(s) raised may be resolved by telephone.  The applicant may telephone the examining attorney at (571) 272-9713 or skye.young@uspto.gov, instead of submitting a written response, to expedite the application. 

 

 

/S. Young/

Examining Attorney

Law Office 117

(571) 272-9713

skye.young@uspto.gov

 

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 9/1/2018 FOR U.S. APPLICATION SERIAL NO. 88070747

 

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 9/1/2018 (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.