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: 12/31/2018

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Search Results Under Trademark Act §2(d)

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

Classification and Identification of Goods/Services

 

The following wording in identification of goods/services is indefinite and/or improperly classified and must be amended: "Computer software for enabling users to make an pay for parking space reservations," in Class 9, "API/Application or software that vehicle manufacturers can integrate into vehicle dashboards or smart systems," in Class 12, and "Voice-enabled software that enables the user to find, book, pay, modify and request information for parking space reservations," in Class 35.    See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In particular, the wording "Computer software for enabling users to make an pay for parking space reservations," in Class 9, is unclear but appears to contain a typographical error that creates the issue.  If accurate, applicant can substitute the word "and" for "an."

 

The wording "API/Application or software that vehicle manufacturers can integrate into vehicle dashboards or smart systems," which the Office classified preliminarily in Class 12, may identify goods in more than one international class. First, software must always be identified by its predominant function(s) and, when possible, by its intended field of use as well.  Second, when software is sold as a finished good (because it is fully downloadable as an "app," for example, or is available on computer media such as an optical disc), then it is properly classified in Class 12.  However, when software is sold as an integral part of a finished good, it is properly classified with the finished good.  Therefore, if applicant's goods are "computer application software sold as an integrated component of vehicle dashboards," then they are classified correctly in Class 12 and need to be further identified by their primary function(s) and field of use.  If the goods are sold under this mark to vehicle manufacturers for integration into vehicles, then they are likely classified as software in Class 9 and simply need to be clearly identified, e.g., "computer application software for use in the electronic systems of vehicles," and further identified by their primary function(s) and field of use.

 

Finally, the wording "voice-enabled software that enables the user to find, book, pay, modify and request information for parking space reservations," in Class 35, appears to identify computer software that is properly classified either in Class 9 (as software that is fully downloadable and/or provided on computer media) or in Class 42 (as software that is provided for temporary use, as from a website or SAAS).  Applicant needs to classify the software appropriately and, if the software is only provided for temporary use, applicant should specify the means.

 

Where the goods/services are misclassified, applicant may respond by (1) adding the appropriate international class to the application and reclassifying these goods and/or services, (2) deleting the misclassified goods/services from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods/services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may adopt the following classification and identification of goods/services, if accurate (suggested changes are set forth with underlining, while explanations are set forth in italics): 

 

Class 9:  Computer application software for computers, handheld computers, mobile phones, and mobile computing devices, namely, software for enabling users to make and pay for parking space reservations; Computer software for enabling users to make and pay for parking space reservations; computer software for use in the electronic systems of vehicles, namely, for ______ {specify primary function(s) of software, e.g., vehicle navigation, locating and navigating to parking spaces}; voice-enabled computer software for mobile computing devices that enables the user to find, book, pay, modify and request information for parking space reservations

 

Class 12:  Computer software sold as an integrated component of the electronic systems of vehicle dashboards, namely, software for ______ {specify primary function(s) of software, e.g., vehicle navigation, locating and navigating to parking spaces}

 

Class 39:  Parking space reservation service 

 

Class 42:  Providing a website featuring technology that enables users to make and pay for parking space reservations; providing temporary use of non-downloadable voice-enabled computer software for mobile computing devices that enables the user to find, book, pay, modify and request information for parking space reservations 

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

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).

 

 

Requirements for Multiple-Class Applications

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). 

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

Advisory: Abandonment of Goods/Services

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services will be deleted from the application:  "Computer software for enabling users to make an pay for parking space reservations," in Class 9, "API/Application or software that vehicle manufacturers can integrate into vehicle dashboards or smart systems," in Class 12, and "Voice-enabled software that enables the user to find, book, pay, modify and request information for parking space reservations," in Class 35. 

 

The application will then proceed with the following goods and services only:  "Computer application software for computers, handheld computers, mobile phones, and mobile computing devices, namely, software for enabling users to make and pay for parking space reservations," in Class 9, "Parking space reservation service," in Class 39, and "Providing a website featuring technology that enables users to make and pay for parking space reservations," in Class 42.   See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

Questions

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  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 refusal(s) and/or requirement(s) 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.  

 

 

 

/Rebecca M. Eisinger/

Rebecca Miles Eisinger

Staff Attorney

Law Office 100

571-272-8845

Informal inquiries: rebecca.eisinger@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 12/31/2018 FOR U.S. APPLICATION SERIAL NO. 88111237

 

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 12/31/2018 (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.