Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 07, 2019

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on June 27, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  attorney information required.  See TMEP §§706, 711.02. 

 

In a previous Office action dated June 27, 2019, applicant was required to satisfy the following requirements:  amend the identification of goods and services and provide a copy of a foreign registration certificate.  Based on applicant’s response, this requirement is maintained and continued.  Further, the proposed amendment to the identification of services is not acceptable for the reasons stated in this Office action.  Thus, the previous wording in the existing identification remains operative for purposes of future amendments and for determining the scope of future amendments.  See TMEP §1402.07(d).

 

 

The following is a SUMMARY OF ISSUES that applicant must address:

• Attorney Information Requirement
• Amended Identification of Goods and Services
• Foreign Registration Certificate Requirement

 

 

Applicant must respond to all issues raised in this Office action and the previous June 27, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

ATTORNEY INFORMATION REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended on June 05, 2019.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application, as amended, identifies the Class 042 services as follows:  “Providing user authentication services using sign-on technology for online software applications in electronic transaction.”

 

However, the previously accepted amendment identifies the following services in Class 042:  “Providing user authentication services using single sign-on technology for online software applications in electronic transaction.” 

 

This portion of the proposed amendment exceeds the scope of the current identification because “sign-on technology” is broader than the previous wording “single sign-on technology.”

 

Applicant argues that the addition of the word “single” was in error, and that such terminology is incongruent with the remaining identification because “there is no such thing as "single" sign-on technology.”  However, an application’s goods and/or 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.  Further, attached evidence from Wikipedia and Business News Daily shows that “single sign-on technology” is widely recognized terminology.

 

Further, as previously detailed in the June 27, 2019 Office action, 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 previously 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.

 

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

ASSISTANCE

 

If applicant has questions regarding this Office action, please 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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

J. Ian Dible

/J. Ian Dible/

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 August 07, 2019 for

U.S. Trademark Application Serial No. 88085343

 

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. 

 

 

J. Ian Dible

/J. Ian Dible/

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 August 07, 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.”