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: 5/30/2019

 

 

 

 

 

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.  

 

INTRODUCTION

 

This application was approved for publication on 4/8/19.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

IDENTIFICATION

 

The identification of services contains wording that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, the following entries require revision:

 

“Customization of computer hardware … and provision of information and advice thereon” is misclassified and should be classified in Cl. 37.  See ID Manual entry “Customizing computer hardware” in Cl. 37 and note thereto.  

 

“Technical advice services in the field of telecommunications, namely, providing technical advice regarding the… maintenance and updating of telecommunication networks” is indefinite and encompasses services in Cl. 37 and Cl. 42.   Advisory services are classified according to service-related subject matter.  See TMEP §1401.02(a). 

 

The word “Technical” alone does not justify classification in Cl. 42.  “Providing technical advice regarding the maintenance and updating of telecommunications network hardware” is classified in Cl. 37, and “Providing technical advice regarding the maintenance and updating of telecommunications network software” is classified in Cl. 42.  See TMEP §1402.11(a)(v) and, by analogy, ID Manual entry “Consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments” in Cl. 37 and note thereto.   

 

“Leasing of access to computer facilities, leasing of access to computers” is indefinite and overbroad.  “Access” suggests a telecommunication service in Cl. 38, rather than a technology service in Cl. 42.  See TMEP §1402.11(a)(iii).  Leasing computer facilities and computers is in Cl. 42. 

 

“Design of websites for others, namely, … commissioned writing, all for the compilation of web pages on the Internet” is indefinite and overly broad.  Writing services are classified in multiple classes depending upon the nature of the activity provided, e.g., commissioned writing of publicity texts for Internet web pages of others would be in Cl. 35. 

 

“Operating … databases, intranets and websites” and “Operating … websites, web pages and portals for others for logging text, images and music provided via computers and mobile telephones” is indefinite and overbroad.  It is unclear if the services involve technological services in Cl. 42 or business services performed for the benefit of others in Cl. 35.  See, e.g., ID Manual entry.

 

“Operation and administration of telecommunication systems and networks for others” belongs in Cl. 35. 

 

“Management of local area networks, namely, network system administration for others” is misclassified and should be classified in Cl. 35.  By analogy, see ID Manual entry “Operation and administration of telecommunication systems and networks for others.” 

 

“On-line computer services, namely, … providing specific information as requested by customers via the Internet,” and “Information and advisory services, namely, providing information at the specific request of end users from a computer database or via the Internet by means of a global computer network” is indefinite and may be construed as including information services, which are classified by service-related subject matter.  Please see the notes to the deleted ID Manual entries.

 

“Providing specific information as requested by customers via the Internet [customized searching]” and “Providing information at the specific request of end-users by means of telephone or global computer networks [customized searching].” These services may include, for example, “Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet or a computer database” in Cl. 42.  

 

To the extent that any of the “aforesaid services” are indefinite and/or overbroad, the phrase “information and advisory services relating to all of the aforesaid services” is also unacceptable as indefinite and/or overly broad.  Information and advisory services are classified by service-related subject matter.  See TMEP §1401.02(a).

 

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).

 

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.

 

 

 

/Samuel R. Paquin/

Examining Attorney

Law Office 101

(571) 272-2514

samuel.paquin@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 5/30/2019 FOR U.S. APPLICATION SERIAL NO. 88208348

 

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 5/30/2019 (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.