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: 2/21/2019

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on January 25, 2019.

 

In a previous Office action dated December 27, 2018, applicant was required to amend, in part, the identification of goods and services in International Classes 09, 36 and 45,

 

In response to the requirement, applicant amended the identification of goods and services; however, as amended, particular wording in the identification of goods and services is still indefinite and needs to be clarified. Accordingly, the requirement for an acceptable identification of goods and services is now MADE FINAL as to the goods and services specified therein.  See TMEP §1402.01; 37 C.F.R. §2.52; 37 C.F.R. §2.63(b).

 

FINAL REQUIREMENT - IDENTIFICATION OF GOODS AND SERVICES

 

This final requirement applies only to the following goods and services: 

 

CLASS 09 – “Authentication devices for use by an authorized user of a computer system to facilitate authentication;” and

 

CLASS 42 – “Providing user authentication and device attestation backend services in e-commerce transactions.”

 

As amended, the wording “authentication devices for use by an authorized user of a computer system to facilitate authentication” in the identification of goods for International Class 09 must be clarified because it does not identify the specific type(s) of authentication devices.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words including “apparatus” and “devices,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).  If the goods have no common commercial or generic name, applicant must further describe the product, its main purpose, and its intended uses.  See id.

 

The proposed amendment “providing user authentication and device attestation backend services in e-commerce transactions” in International Class 42 is indefinite and needs to be clarified because it does not identify the services with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must amend the identification to specify the type of technology used in rendering the services such as biometric hardware and software technology, as specified in the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. 

 

Applicant may substitute the following wording, if accurate:  

 

IC 009 – “Authentication devices in the nature of ______ [specify type of devices, e.g., biometric hardware and computer software] for use by an authorized user of a computer system to facilitate authentication; computer software for authentication of user identification and device attestation; Computer software for authentication of user identification and device attestation;” 

 

IC 035 – “Association services, namely, promoting the development, use of, and compliance with standards for authentication and device attestation;” 

 

IC 036 – “Financial transaction services, namely, providing secure commercial transactions in the nature of authentication of user identification and device attestation services for authorizing financial transactions;” and

 

IC 042 – “Providing user authentication and device attestation backend services using ______ [indicate technology, e.g., single sign-on technology, biometric hardware and software technology, etc.] in e-commerce transactions; computer security services, namely, providing a secure binding process between a device and a backend server for authentication of user identification and device attestation; computer security services in the nature of authentication of user identification and device attestation services for authorizing financial transactions.”

 

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).

 

RESPONSE GUIDELINES:  Applicant must respond within six months of the date of issuance of this final Office action or the following goods and services to which the final requirement applies will be deleted from the application by Examiner’s Amendment:

 

CLASS 09 – “Authentication devices for use by an authorized user of a computer system to facilitate authentication;” and

 

CLASS 42 – “Providing user authentication and device attestation backend services in e-commerce transactions.”

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and services: 

 

IC 009 – “Computer software for authentication of user identification and device attestation;” 

 

IC 035 – “Association services, namely, promoting the development, use of, and compliance with standards for authentication and device attestation;” 

 

IC 036 – “Financial transaction services, namely, providing secure commercial transactions in the nature of authentication of user identification and device attestation services for authorizing financial transactions;” and

 

IC 042 – “Computer security services, namely, providing a secure binding process between a device and a backend server for authentication of user identification and device attestation; computer security services in the nature of authentication of user identification and device attestation services for authorizing financial transactions.”

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

 

/Miroslav Novakovic/

Trademark Examining Attorney

Law Office 108

(571) 272-2866

miroslav.novakovic@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 2/21/2019 FOR U.S. APPLICATION SERIAL NO. 88120383

 

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 2/21/2019 (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.