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:  July 18, 2020

 

 

INTRODUCTION

 

On February 17, 2020, action on this application was suspended pending receipt of a copy of the trademark registration certificate from applicant’s country of origin.  TMEP §§716.02(b), 1003.04(a)-(b).  The referenced registration certificate has been received by the Office, thus the requirement for a copy of the foreign registration certification has been satisfied.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. 

 

Based on applicant’s response, the trademark examining attorney now issues the following new advisory:  identification scope exceeds foreign registration.  See TMEP §§706, 711.02. 

 

 

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

• Identification Scope Advisory

 

 

Applicant must respond to all issues raised in this 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).

 

 

IDENTIFICATION SCOPE ADVISORY

 

Particular wording in the U.S. application’s identification of services has been found to exceed the scope of services in the foreign registrations upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and services that are within the scope of the goods and services in the foreign registrations.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and services in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the following offending services: 

 

1)      “Data processing services featuring Information relating to weather, soil and vermin by computer” in International Class 035;

2)      “Rental of access time to global computer networks” in International Class 038;

3)      “Publication of manuals for operation of computers and use of computer program” in International Class 041;

4)      “Agricultural research and providing information thereto” and “Research services in the field of telecommunications technology” in International Class 042; and

5)      “Providing information relating to vineyard horticulture via computer terminals” in International Class 044.

 

These services in the U.S. application exceed the scope of services in the foreign registration because these services are not encompassed by the services identified in the foreign registration.  Thus, these goods and services in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the services in the foreign registrations.

 

Additionally, the wording “Providing information technology information in the field of agriculture technology” in International Class 042 is indefinite and must be clarified, as the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Further, applicant must delete or modify the duplicate entry of “Creating and maintaining web sites for others” in International Class 042, as the USPTO will remove duplicate entries from the identification prior to registration. See generally TMEP §§1402.01, 1402.01(a). 

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)   Amending the identification of services in the U.S. application for the Section 44(e) filing basis to correspond with the services identified in the foreign registration to ensure that all services beyond the scope of the foreign registrations are deleted from the U.S. application, along with deleted duplicate wording and modified indefinite wording in Class 042 as indicated in bold below, as follows:

 

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” 

 

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” 

 

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, symposium, conference, lecture meeting, training workshop, study group, debate session, group debate session, meeting, gathering and workshop 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” 

 

International Class 042:

 

“Providing meteorological information; Agricultural research of agricultural soil and providing information related thereto; Agricultural research of farm products and providing information related thereto; Providing 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; 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; 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; 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” 

 

OR

 

(2)   Deleting the Trademark Act Section 44 basis for the services beyond the scope of the foreign registrations and relying solely on the Section 1 basis for those services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these services are within the scope of the foreign registrations and should remain in the U.S. application.

 

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.

 

 

ASSISTANCE

 

Please email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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 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 July 18, 2020 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 July 18, 2020, 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.”