Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  February 15, 2020

 

 

Applicant must address issues shown below.  On February 05, 2020, the examining attorney and Danielle Mattessich discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

 

SUMMARY OF ISSUES:

• Amended Identification of Goods and Services Requirement – Classes 009 and 042
• Foreign Registration Certificate Requirement

 

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED – CLASSES 009 AND 042

 

Particular wording in the amended identifications of goods and services in Classes 009 and 042 is indefinite and must be clarified because the nature of the goods and services is unclear in part.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “Electronic machines, apparatus and their parts, namely, downloadable computer program…” in Class 009 is indefinite, as it specifies software goods but not the prefatory identified “machine” goods.  Further, the wording “Intrusion alarms” in Class 009 is indefinite, as the nature of the goods is unclear.  Lastly, Class 042 contains a typo with the wording “nternet.”  Applicant may choose the following suggested identifications, with target identifications underlined and 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 sold as a unit therewith 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; Electronic machines, apparatus and their parts, namely, computer hardware and recorded downloadable computer program sold as a unit therewith 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; 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 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”

 

 

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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

 

Please email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, such communication is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

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

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/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.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 February 15, 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 February 15, 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.”