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: 6/27/2019

 

 

THIS IS A FINAL ACTION.

 

 

INTRODUCTION

 

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

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

 

In a previous Office action dated December 06, 2018, the applicant was required to satisfy the following requirements:  amend the identifications of goods and services, and translate foreign wording in the mark.

 

Applicant’s translation statement is acceptable and entered into the record.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirements 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:

• Amended Identification of Goods and Services Requirement

 

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and 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. 

 

In this case, the proposed amendment in Class 009 identifies “downloadable software” goods.  However, these portions of the proposed amendment are beyond the scope of the original identification because the original application did not identify these goods.

 

Additionally, particular wording in the identification of goods and services is indefinite and must be clarified due to agreement inconsistencies between singular and plural wordings.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Further, applicant has included the term “or” in the identification of goods and services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods and services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the nature of the goods and services is unclear.

 

An application must specify, in an explicit manner, the particular goods and services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods and services, if appropriate, or rewrite the identification with the “or” deleted and the goods and services specified using definite and unambiguous language. 

 

Applicant may substitute the following wording with amended language shown in bold, if accurate:

 

 

International Class 009:

 

            “Sensors for measuring air temperature, relative humidity, ground temperature, water temperature, water content leaving the soil, electrical conductivity (EC), solar radiation, carbon dioxide (CO2) concentration, and soil acidity, not for medical use; Measuring and testing machines and instruments, namely, level measuring machines; Telecommunication machines and apparatus, namely, telecommunication cables; Electronic machines, apparatus and their parts, namely, integrated computerized systems for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information related to agriculture and horticulture; Electronic machines, apparatus and their parts, namely, mobile computing and operating platforms consisting of data transceivers, wireless networks and gateways for collection and management of data in the fields of agriculture and horticulture; Electronic machines, apparatus and their parts, namely, environmental monitoring system comprised of meters and sensors that measure pressure, humidity, temperature and includes alarm and reporting functions; Electronic machines, apparatus and their parts, namely, computer hardware and recorded software system for remotely monitoring environmental conditions and controlling devices within designated spatial areas; Electronic machines, apparatus and their parts, namely, computer hardware and recorded computer program system for remotely monitoring environmental conditions and controlling devices within designated spatial areas; Electronic machines, apparatus and their parts, namely, electronic control systems for machines; Surveillance cameras; Anti-intrusion alarms; Electric and magnetic meters and testers not for medical use, namely, air temperature meters, humidity meters, ground temperature meters, water temperature meters, soil moisture content meters, PH meters, electrical conductivity (EC) meters, solar radiation meters and carbon dioxide (CO2) concentration meters; Power distribution and control machines and apparatus, namely, electrical power distribution blocks; Electric wires and cables; Smartphones; Personal digital assistants; Thermo-hygrometer; Electronic soil moisture measuring sensors”

 

International Class 035:

 

            “Providing business management information relating to farm management via telecommunication; Business analysis, business advisory and business consultancy relating to farm management via telecommunication; Business advisory and business consultancy in the field of agriculture via telecommunication; Business analysis, business advisory and business consultancy relating to farm management; Business advisory and business consultancy in the field of agriculture; Business management analysis, business advisory and business consultancy; Retail store services and wholesale store services featuring foods and beverages; business administration assistance and business consultancy services relating to retail business; Advertising; Publicity consultation; Marketing; providing office functions; Accounting services; Systemization and compilation of information into computer databases and consultancy and advisory thereof and providing information thereto; Data processing services featuring Information relating to weather, soil and vermin by computer”

 

International Class 038:

 

            “Telecommunication other than broadcasting, namely, telecommunication access services; Providing access to communication networks and providing information thereof; Broadcasting; News agencies; Rental of telecommunication equipment including telephones and facsimile apparatus; Communication by mobile phones, telexes, computer terminals, telegrams, telephones and facsimiles; Providing access to the Internet by providers; Internet access provider services; Rental of access time to global computer networks”

 

International Class 041:

 

            “Organization of exhibitions for cultural and educational purposes featuring materials relating to agriculture and manufacture of farm products; Education services, namely, providing courses of instruction relating to agriculture and horticulture; Publication of books; Publication of printed matter in electronic form; Education services, namely, providing courses of instruction relating to arts, crafts, sports and general knowledge; Education services, namely, organizing, conducting and arranging seminars, symposiums, conferences, lecture meetings, training workshops, study groups, debate sessions, group debate sessions, meetings, gatherings and workshops relating to agriculture and providing information related thereto; Publishing of electronic publications; Providing a web site featuring non-downloadable instructional videos and images relating to agriculture via the Internet and computer networks; Publication of manuals for operation of computers and use of computer programs”

 

International Class 042:

 

            “Providing meteorological information; Agricultural research and providing information thereto; Agricultural research of agricultural soil and providing information related thereto; Agricultural research of farm products and providing information related thereto; Providing information technology information in the field of agriculture technology; Research relating to environmental protection in the field of natural environment and conservation of natural environment and providing information related thereto; Computer software design, computer programming, and maintenance of computer software; Creating and maintaining web sites for others; Design and planning of computer network system for others; Research services in the field of telecommunications technology; Rental of computers; Providing computer programs on data networks, namely, providing temporary use of on-line non-downloadable software for use in database management; Rental of memory space on servers and providing information related thereto; Rental of measuring and testing machines and instruments being computers; Design of electronic machines and telecommunications apparatus; Providing meteorological information via the Internet and computer networks; Providing computer programs relating to agriculture and horticulture on data networks, namely, providing temporary use of on-line non-downloadable software for use in database management; Agricultural research and providing information relating thereto related to agriculture, livestock breeding and fisheries via the Internet; agricultural research related to agriculture, livestock breeding and forestry and providing advisory, consultancy and information related thereto; Scientific research and providing advisory, consultancy and information related thereto; Hosting computer servers, namely, hosting the web sites of others on a computer server for a global computer network; Software as a service (SaaS) services featuring software for connecting, operating, and managing networked agricultural and horticultural systems for use in adjusting environmental conditions in order to optimize growing conditions for crops; Software as a service (SaaS) services featuring software for collecting, recording, monitoring and analyzing data from measuring apparatuses in order to automatically optimize growing conditions for crops in the fields of agriculture and horticulture; Software as a service (SaaS) services featuring software for connecting, operating, and managing networked agricultural and horticultural systems in the internet of things (IoT) for use in adjusting environmental conditions in greenhouses in order to optimize growing conditions for crops; Cloud computing featuring software for use in database management; Research, analysis and consultancy relating to computer software design and computer programming; Providing information relating to computer software design, computer programming, and maintenance of computer software; Configuration management of computer software; Creating, maintaining, modernizing computer software and providing information related thereto; Creating and maintaining web sites for others; Providing user authentication services using single sign-on technology for online software applications in electronic transaction; Creating home pages on the Internet for others; Rental of web servers for the Internet; Computer services including fault diagnosis and computer system audit, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, Trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices; Monitoring of computer systems to detect breakdowns by remote access; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Troubleshooting of computer software problems; Technological consulting services in the field of operating computer hardware, software and computer peripheral devices; Technological consulting services in the field of information technology (IT) platform; Providing of electronic data back-up services and consulting and advisory and providing information relating thereto in the field of computer systems; Recovery of computer data and consulting, advisory and providing information relating thereto; Design of computer software for agriculture and horticulture; Computer programming for agriculture and horticulture; Maintenance of computer software for agriculture and horticulture”

 

International Class 044:

 

            “Providing information relating to vermin exterminating, control and killing of vermin for agriculture, horticulture and forestry purposes via the Internet; Weed killing; Providing information and consultancy and advisory relating to vermin exterminating, and control and killing of vermin and weeds for agriculture, horticulture and forestry purposes; Animal breeding; Veterinary services; Beautification for animals, namely, animal grooming; Rental of potted plants; Consultancy and advisory and providing information relating to animal breeding; Consultancy and advisory and providing information relating to veterinary services; Consultancy and advisory and providing information relating to animal grooming; Spreading of fertilizers and other agricultural chemicals, insecticide and repellent; Consultancy and advisory and providing information relating to spreading of fertilizers and other agricultural chemicals, insecticide and repellent; Consultancy and advisory and providing information relating to spreading of fertilizers and other agricultural chemicals, insecticide and repellent for agriculture, horticulture and forestry purposes; Plant nursery services; Consultancy and advisory and providing information relating to plant nursery services; Providing information relating to vineyard horticulture via computer terminals”

 

 

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 GUIDELINES FOR FINAL REFUSAL

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  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).

 

 

ASSISTANCE

 

If applicant has any 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 the requirements 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. 

 

 

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.  

 

 

 

J. Ian Dible

/J. Ian Dible/

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 6/27/2019 FOR U.S. APPLICATION SERIAL NO. 88085343

 

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 6/27/2019 (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.