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:  November 22, 2019

 

The undersigned trademark examining attorney approved this application for publication on July 15, 2019.  Subsequently, the application was withdrawn from the publication queue for correction.  The following requirement for acceptable identification of services is therefore now added.  The examining attorney apologizes for her error, and for the delay in communicating this new issue to the applicant.

 

 

Partial Requirement: Identification of Class 42 Services

 

Specific language in applicant’s recitation of services for Class 42 is indefinite and must be amended to state the services more clearly.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In particular, the following language is unacceptable (the discussion below identifies the language by its number in this list):

 

1. Content management services in the nature of providing customized online websites and web pages for publishing, distributing, editing and modifying website and mobile site and other digital content for others;
2. content management services, namely, maintaining the website and mobile sites of others in the nature of … support and optimization of online websites and mobile sites for third parties;
3. providing software technology services, namely, …technical support … of marketing automation technology software;
4. content management system in the nature of providing a web site featuring technology that enables users to engage in an electronic system for publishing, distributing, editing and modifying website and mobile site and other digital content for others, as well as for maintaining the websites and mobile sites of others, namely, for planning, design, development, maintenance, support and optimization of online websites and mobile sites for third parties

 

Regarding issue (1), the language is unclear whether applicant is providing Class 42 technological services or is providing content for websites, which would be classified by the subject matter of the content.  Presuming that the services are more technological in nature, the language could be amended to read:  “Content management services for others in the nature of providing customized online websites and web pages that allow users to publish, distribute, edit, and modify website and mobile site and other digital content,” in Class 42.

 

Regarding issue (2), the nature of the “support” services needs to be clarified so that it is definite and is classified appropriately.  In addition, “content management services” are properly classified in Class 35, so that language can be re-classified with applicant’s other services in Class 35.  Applicant may adopt the following language, if accurate: “content management services, namely, maintaining the website and mobile sites of others in the nature of planning, design, development, maintenance, and technical support in the nature of troubleshooting software issues of online websites and mobile sites for third parties,” in Class 42, and “content management services, namely, optimization of online websites and mobile sites for third parties,” in Class 35.

 

Regarding issue (3), the issue is that of identifying the nature of the technical support.  If the services are in the nature of repair and maintenance of software, then they simply need to be so clarified.  The following amended language would be acceptable, if accurate:  “providing software technology services, namely, design, development, customization, technical support in the nature of installation, repair, and maintenance, and updating of marketing automation technology software,” in Class 42.

 

Finally, regarding issue (4), the opening language does not logically encompass the specified services that follow it.  This could be resolved by specifying that the services are “content management system services,” rather than software goods/services that can be characterized as a content management system.  The wording could be amended to read as follows, if accurate: “content management system services in the nature of providing a web site featuring technology that enables users to engage in an electronic system for publishing, distributing, editing and modifying website and mobile site and other digital content for others, as well as for maintaining the websites and mobile sites of others, namely, for planning, design, development, maintenance, support and optimization of online websites and mobile sites for third parties,” in Class 42.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

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.

 

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).

 

 

Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 42 will be deleted from the application:  “Content management services in the nature of providing customized online websites and web pages for publishing, distributing, editing and modifying website and mobile site and other digital content for others; content management services, namely, maintaining the website and mobile sites of others in the nature of … support and optimization of online websites and mobile sites for third parties; providing software technology services, namely, …technical support … of marketing automation technology software; content management system in the nature of providing a web site featuring technology that enables users to engage in an electronic system for publishing, distributing, editing and modifying website and mobile site and other digital content for others, as well as for maintaining the websites and mobile sites of others, namely, for planning, design, development, maintenance, support and optimization of online websites and mobile sites for third parties.” 

 

The application will then proceed with the remaining goods and services.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

Questions

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues she has raised in 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 requirement in this Office action.  See TMEP §§705.02, 709.06.  The USPTO does not accept emails as responses to Office actions, however, 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.  

 

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

 

 

/Rebecca M. Eisinger/

Staff Attorney, Law Office 100

United States Patent & Trademark Office

Informal inquiries: rebecca.eisinger@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 November 22, 2019 for

U.S. Trademark Application Serial No. 88209979

 

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. 

 

 

/Rebecca M. Eisinger/

Staff Attorney, Law Office 100

United States Patent & Trademark Office

Informal inquiries: rebecca.eisinger@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 November 22, 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.”