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:  March 27, 2020

 

Applicant must address issues shown below.  The examining attorney and applicant’s counsel have corresponded regarding 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.

 

Upon further review, the amended descriptions have been deemed insufficiently definite as to the function of software in Classes 009 and 042.  See TMEP §1402.03(d).  The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Specifically, the Office has determined that the amended descriptions do not really state what the software does but rather what the user will do in the course of using the software.  For example, the wording “improve productivity, workflow, risk management and decision-making” does not describe functions carried out by the software and “through the assessment and exploitation of data, information and intelligence” has been deemed too vague.  The applicant must indicate clearly what the software does.  Specifically, does it collect or manage, or process  data/information/intelligence? 

 

The following are suggestions of acceptable language:

 

Computer application software for mobile devices, namely, software  for use in managing, analyzing, collecting and processing data, information and intelligence used to improve productivity, workflow, risk management and decision-making through the assessment and exploitation of that data, information and intelligence;

 

Downloadable computer software, namely, computer application software for mobile devices for use in managing, analyzing, collecting and processing data, information and intelligence used to improve productivity, workflow, risk management and decision-making through the assessment and exploitation of data, information and intelligence, relevant to and for use in the field of trading securities, currencies, financial instruments and products and in the field of advising about trading securities, currencies, financial instruments and products;

 

Downloadable computer software, namely, computer application software for mobile devices for use in connecting customers with financial services companies and financial institutions, all in the field of trading securities, currencies, financial instruments and products and enabling users to provide advice about trading securities, currencies, financial instruments and products;

 

Downloadable computer application software for use in managing, analyzing, collecting and processing data, information and intelligence used to improve productivity, workflow, risk management and decision-making through the assessment and exploitation of data, information and intelligence, relevant to and for use in the field of trading securities, currencies, financial instruments and products and enabling users to provide advice about trading securities, currencies, financial instruments and product

 

The foregoing proposed amendments are applicable to the non-downloadable software in Class 042, as well.  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.

 

Applicant’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.  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 goods and/or services or add goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The undersigned welcomes a call or email communication to resolve any proposed amendments to the application that will immediately place the application in condition for publication.  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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Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Attorney, Law Office 112

571-272-9208 (direct)

kimberly.perry@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 March 27, 2020 for

U.S. Trademark Application Serial No. 88095665

 

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. 

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Attorney, Law Office 112

571-272-9208 (direct)

kimberly.perry@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 March 27, 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.”