Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  August 12, 2022

 

 INTRODUCTION

 

This Office action is in response to applicant’s communication filed on June 22, 2022.

 

In a previous Office action(s) dated August 7, 2022, the trademark examining attorney re-suspended the application pending a prior-filed application.  Upon review of applicant’s submitted consent agreement, the potential confusion with a prior-filed application has been withdrawn.

 

Based on applicant’s response, the following requirements are maintained: identification amendment requirement.  In addition, based on further review of the application, a new identification requirement is also warranted.

 

SUMMARY OF ISSUES that applicant must address:

• Identification Amendment Required
• Partial Abandonment – Advisory

 

 

I.         IDENTIFICATION AMENDMENT REQUIRED

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

The wording identified below in the identification of goods is indefinite and must be amended to further clarify the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Specifically, in Class 009, applicant must explicitly note that the software is downloadable in nature.

 

In addition, applicant’s amendment in Class 042 for “computer network security services” exceeds the scope of the previous identification amendment, and is thus not acceptable.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows:  “Computer network security services, namely, restricting unauthorized access to computer networks.”

 

However, the proposed amendment identifies the following goods and/or services:  “Computer network security services.” 

 

If accurate, applicant may adopt the following identification in their appropriate international classes:

 

International Class 009: Downloadable software for computer network security; downloadable computer software for management of physical and virtual devices connected to a network for the detection of unauthorized access and data breaches and for authorization management

 

International Class 042: Computer network security services, namely, restricting unauthorized access to computer networks by {indicate, e.g., the media, users without credentials, etc.}; services for {this wording makes it unclear if there are more services} monitoring of computer systems of network-connected physical and virtual devices by remote access for the detection of unauthorized access and data breaches and for authorization management; monitoring of computer systems of network-connected physical and virtual devices for detecting unauthorized access or data breach

 

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

II.        PARTIAL ABANDONMENT – ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services will be deleted from the application:  Class 009 and “Computer network security services; services for monitoring of computer systems of network-connected physical and virtual devices by remote access for the detection of unauthorized access and data breaches and for authorization management” in Class 042.  The application will then proceed with the following goods and/or services in International Class(es) 042 only:  “monitoring of computer systems of network-connected physical and virtual devices for detecting unauthorized access or data breach.”  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

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

 

 

/Elle Marino/

Trademark Examining Attorney

Law Office 129

Phone: (571) 270-3699

E-mail: elle.marino@uspto.gov

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA 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 August 12, 2022 for

U.S. Trademark Application Serial No. 88186515

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·       Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.