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: 1/7/2019

 

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

 

SUMMARY OF ISSUES:

• Refusal under Section 44(e) – Owner Name Differs in U.S. Application and Foreign Registration
• Drawing Issue – Unclear if Mark in Foreign Registration is in Standard Characters
• Identification of Goods and Services Requires Amendment
• Unsigned Application

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

However, applicant must respond to the following refusal and requirements.

 

REFUSAL UNDER SECTION 44(e) – OWNER NAME DIFFERS IN U.S. APPLICATION AND FOREIGN REGISTRATION

 

Registration is refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign registration on the filing date of the U.S. application.  See 15 U.S.C. §1126(e); TMEP §1005. 

 

In an application filed solely under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application.  TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  However, in this case, the foreign registration specifies an owner other than the U.S. applicant.  Specifically, the U.S. application sets forth the owner as Continental Automotive GmbH, while the foreign registration sets forth the owner as Parkplatz-gesucht UG.

 

If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application.  See TMEP §1005.  Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant on or before the filing date of the U.S. application.  See TMEP§§1005, 1006.

 

If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant will have to amend to an acceptable basis, such as Section 1(a) or 1(b).  See TMEP §§806.03, 1005.  A foreign registration certificate is not required for a Section 1(a) or 1(b) basis.  See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).

 

DRAWING ISSUE – UNCLEAR IF MARK IN FOREIGN REGISTRATION IS IN STANDARD CHARACTERS

 

The USPTO cannot accept the drawing of the mark because it is not a “substantially exact representation” of the mark as it appears in the foreign application or registration.  See 37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01.  Specifically, the marks do not correspond because the U.S. application contains a standard character claim and the foreign application or registration does not and applicant has stated “NO” with respect to the field indicating whether the mark in the foreign registration is in standard characters or equivalent. Accordingly, applicant must further clarify. See TMEP §807.03(f).

 

Applicant may respond by satisfying one of the following:

 

(1)       Submit the following statement in the U.S. application:  “Under the law of the country of origin, the foreign application or registration includes a claim that the mark is in standard characters (or the equivalent).”; or

 

(2)       Delete the standard character claim from the U.S. application and proceed with a special form drawing by submitting an accurate and concise description of the literal and design elements in the mark.  The following mark description is suggested, if accurate:  The mark consists of the wording “PARKPOCKET” in stylized font. 

 

See 37 C.F.R. §§2.37, 2.52(b), 2.61(b); TMEP §§807.03(f), 808.02, 1011.01.

 

IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT

 

The wording listed below from the identification of goods and services is indefinite and must be clarified for the reasons stated.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Class 9

 

The identification "magnetic data carriers, compact discs, DVDs and other digital recording media" is indefinite and must be clarified to further indicate whether the goods are blank or feature content. If the goods are prerecorded or feature content, then applicant must further specify the field or subject matter of the prerecorded or featured content. In addition, applicant must further specify the form of the other digital recording media. Suggestions are set forth below. 

 

The identification "computer software" is indefinite and must be clarified to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software 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). In addition, software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software.  For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual. A suggested identification is set forth below.

 

The identification "computer programs and software for card readers" is indefinite and must be clarified to further indicate the function of the software with specificity, e.g., "computer programs and software for operating card readers."

 

The identification "navigation, orientation and mapping devices" is indefinite and must be clarified to further specify the types of devices, e.g., GPS navigation devices, etc.

 

The identification "readers using electromagnetic waves for identification and locating purposes" is indefinite and must be clarified to further specify the nature of the readers, e.g., optical readers, RFID readers, etc.

 

The identification "encoded cards" is indefinite and overbroad as it may include goods in more than one international class. Specifically, the identification includes "magnetically encoded key cards" and "magnetically encoded charge cards" in International Class 9 and "non-magnetically encoded gift cards" and "non-magnetically encoded fidelity cards" in International Class 16.

 

The identification "Electronic publications (electronically downloadable) in connection with providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility and in connection with the business of providing information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility" is indefinite and must be clarified to further specify the nature of the publications (e.g., books, booklets, magazines, etc.) and to further clarify the subject matter of the publications. In addition, the identification includes parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.

 

Class 35

 

The identification “Providing advertising space, advertising sites and advertising media” is indefinite and must be clarified to further specify the nature of the services. For example, if accurate, applicant may amend the identification to the following in Class 35: “Providing advertising space on the internet, providing advertising sites in the nature of provision of space on websites for advertising goods and services, and distribution of advertising media in the nature of advertising materials.”

 

The wording “verification” in the identification “Collating, systematising and verification of electronic data in computer databases” is indefinite and must be clarified to further specify the nature of the services as it is unclear what is being verified about the data. If by verifying applicant is essentially maintaining and/or updating the data, then applicant may amend the identification to “Collating, systematising and maintenance of electronic data in computer databases” in Class 35.

 

The identifications “Loyalty, incentive and bonus program services; Consumer consultancy by means of telecommunications networks for advertising and sales purposes; Providing of names and addresses for advertising purposes” are similarly indefinite and must be clarified for further specify the nature of the services. Suggestions are set forth below.

 

Class 38

 

The identifications “telecommunications” and “Internet based telecommunication services” are indefinite and must be clarified to further specify the type of telecommunication services. Suggested identifications are set forth below. 

 

The identification of "access to content, websites and portals" is indefinite and must be clarified to further specify the nature of the services, such as "Telecommunication access services to content, websites and internet website portals."

 

The identifications "providing online forums and portals" and "Providing portals on the internet for the purpose of customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks" are indefinite and must be clarified to further specify the nature of the services. Specifically, the online forums require further specification as to the nature of the forum services. In addition, the wording relating to portals is overbroad as it may include services in more than one class. Specifically, if applicant is providing access to internet website portals, then these services are classified in Class 38. However, if applicant is acting as a content provider and providing the underlying internet website portals, then applicant must specify the subject matter of the portals and classify the identification accordingly. For example, "Providing online forums for transmission of messages among computer users and providing telecommunication access services to internet website portals; Providing telecommunication access services to website portals on the internet for the purpose of accessing customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks" are classified in Class 38. However, “Providing website portals on the internet featuring customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks for commercial purposes” are in Class 35.

 

Class 39

 

The identifications “provision of car parks and car parking services” and “rental of parking spaces and car parks” are indefinite as to the wording “car parks” as it is unclear what the nature of the car parks. If accurate, applicant may amend the identification to “car parking facilities.”

 

The identification “navigation services” is indefinite and must be clarified to further specify the nature and/or type of the navigation services, e.g., GPS navigation services.

 

The identification “arranging of rental and leasing contracts with regard to parking spaces and places to park” is indefinite and appears to be misclassified, as arranging of commercial contracts are generally classified in International Class 35, not International Class 39. If accurate, applicant may adopt the following identification in Class 35: “Arranging of commercial rental and leasing contracts with regard to parking spaces and places to park.”

 

Class 41

 

The identification in Class 41 is indefinite and must be clarified to further specify the types of publications, e.g., newsletters, books, magazines, etc., as well as further clarify the subject matter of the publications. Further, as noted above, the parenthetical information should be incorporated in the identification. A suggested identification is set forth below.

 

Class 42

 

The identification “providing software as a service” is indefinite and must be clarified to further specify the function or purpose of the software services. A suggested identification is set forth below.

 

The identification “hiring out of data processing equipment” is indefinite and must be clarified to further indicate the nature of the services. If applicant is renting data processing equipment, applicant may amend the identification to “rental of data processing equipment” in International Class 42.

 

Suggested Identification

 

Applicant may adopt any or all of the following identifications, if accurate (changes shown in bold typeface):

 

CLASS 9:

 

Apparatus for recording, transmission or reproduction of sound or images; prerecorded magnetic data carriers, compact discs, DVDs, and other digital prerecorded media devices, all featuring information about parking; Data processing equipment, computers; Computer software for enabling drivers to find and rent parking spaces; Computer programs and software for the recording, identification, locating, management, supplying and rental of parking spaces and car parks; Computer programs and software for operating card readers; Navigation, orientation and mapping devices, namely, GPS navigation devices; Card reading equipment; optical readers using electromagnetic waves for identification and locating purposes; magnetically encoded key cards; Electronic downloadable publications in the nature of booklets for providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility, featuring information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility

 

CLASS 16: NEW CLASS

 

Non-magnetically encoded gift cards

 

CLASS 35:

 

Advertising; Marketing and promotion services; On line advertising on a computer network; Providing advertising space on the internet, providing advertising sites in the nature of provision of space on websites for advertising goods and services, and distribution of advertising media in the nature of advertising materials; Collating, systematizing and maintenance of electronic data in computer databases; Loyalty, incentive and bonus program services, namely, administration of a consumer loyalty program to promote rental of parking spaces by others; Consumer consultancy by means of telecommunications networks for advertising and sales purposes, namely, providing commercial advice for consumers in the choice of products and services; providing business information regarding the names and addresses of others for advertising purposes; Providing website portals on the internet featuring customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks for commercial purposes; Arranging of commercial rental and leasing contracts with regard to parking spaces and places to park

 

CLASS 38:

 

Telecommunications services, namely, providing telecommunications connections to a global computer network; Internet based telecommunication services, namely, providing telecommunications connections to the internet; Telecommunication gateway services; Telecommunication access services to content, websites and internet website portals; Communication by hertzian wave; Transmission of information on-line; Providing online forums for transmission of messages among computer users and providing telecommunication access services to internet website portals; Providing telecommunication access services to website portals on the internet for the purpose of accessing customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks

 

CLASS 39:

 

Car parking and Vehicle storage; Provision of car parks in the nature of car parking facilities and car parking services; Rental of parking spaces and car parks in the nature of car parking facilities; GPS navigation services; Providing non-downloadable information online in the field of car parking as it relates to providers, renters, leasers and users of parking spaces and car parks

 

CLASS 41:

 

Providing electronic non-downloadable publications online, namely, newsletters for providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility, featuring information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility

 

CLASS 42:

 

Design and development of computer hardware and software; Providing software as a service (SAAS) services, namely, software for use by others for enabling drivers to find and rent parking spaces; Rental of software, Rental of data processing equipment

 

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.

 

Advisory: MULTIPLE-CLASS APPLICATION REQUIREMENT

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least seven (7) classes; however, applicant submitted fees sufficient for only six (6) classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

UNSIGNED APPLICATION

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

RESPONSE GUIDELINES

 

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.  

 

/Cristiana Schwab/

Senior Attorney

Law Office 103

(571) 272-3514

cristiana.schwab@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 1/7/2019 FOR U.S. APPLICATION SERIAL NO. 88117295

 

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 1/7/2019 (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.