Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  September 26, 2019

 

 

 

 

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.  

 

This Office action is in response to applicant’s communication filed on August 29, 2019, as discussed with the applicant’s attorney on September 6, 2019; no additional communication was received.  Please note that all issues not discussed in this office action have been resolved.

 

The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification.

 

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

The identification of goods and/or services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must identify the goods and/or services specifically to provide public notice to the average person who does not have an in-depth knowledge of the relevant field(s) and to enable the USPTO to classify the goods and/or services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). 

 

In an identification, an applicant must use the common commercial or generic name for the goods and/or services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP§§1402.01, 1402.03(a).  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  If applicable, open-ended terms (e.g., “including,” “such as”) must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). 

 

The applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided.  Id., 102 USPQ at 322.

 

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.

 

In this case, the services in International Class 45 remain indefinite.  As discussed with the applicant’s attorney, the wording “in the nature of adaptive robotic process automation (RPA)” does not describe any particular service and could possibly include services in a different class.

 

 

 

Applicant may adopt the following identification if accurate [changes in bold text]:

 

 

Software for automation of administrative services related to legal services and of legal services; artificial intelligence-based software for document generation and workflow automation for efficiency improvements in legal service delivery; mobile software applications for document generation and workflow automation for efficiency improvements in legal service delivery; software featuring legal document generation, legal workflow automation, exploratory tools to support legal reasoning, legal data management and analysis in International Class 9;

 

Software as a service (SAAS) platform for automation of administrative services related to legal services and of legal services; artificial intelligence-based software as a service (SAAS) platform featuring software for document generation and workflow automation for efficiency improvements in legal service delivery; software as a service (SAAS) platform featuring legal document generation, legal workflow automation, exploratory tools to support legal reasoning, legal data management and analysis in International Class 42;

 

Legal support services, namely, automated document generation and automated administrative functions including filing, docketing, time entry in the nature of [list the common commercial or generic name of the services.  If there is no common commercial or generic name for the services, the applicant must describe the services and indicate their nature.] in International Class 45.

 

 

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 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 Sections 1(b) and/or 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only three class(es).  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 Sections 1(b) and/or 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

APPROPRIATE RESPONSES

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  legal support services, namely, automated document generation and automated administrative functions including filing, docketing, time entry.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

 

In such case, the application will proceed for the following services only: 

 

Software for automation of administrative services related to legal services and of legal services; artificial intelligence-based software for document generation and workflow automation for efficiency improvements in legal service delivery; mobile software applications for document generation and workflow automation for efficiency improvements in legal service delivery; software featuring legal document generation, legal workflow automation, exploratory tools to support legal reasoning, legal data management and analysis in International Class 9;

 

Software as a service (SAAS) platform for automation of administrative services related to legal services and of legal services; artificial intelligence-based software as a service (SAAS) platform featuring software for document generation and workflow automation for efficiency improvements in legal service delivery; software as a service (SAAS) platform featuring legal document generation, legal workflow automation, exploratory tools to support legal reasoning, legal data management and analysis in International Class 42.

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 September 26, 2019 for

U.S. Trademark Application Serial No. 88199164

 

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. 

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 September 26, 2019, 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.”