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: 3/7/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

I.         SEARCH OF THE OFFICE RECORDS

 

No Prior Conflicting Marks

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

II.        INFORMALITIES

 

Although there is no conflict with any prior registered or pending marks, the applicant must respond to the following issue(s).

 

Application Refused—Applicant Improperly Identified the Services

The applicant has provided this Office with the following identification:

 

Business consulting services related to digital experience technology platform implementation, optimization, and measurement; business consulting services related to digital design and strategy for consumer digital experiences, interaction design, and visual design, in International Class 035; and

 

Computer services, namely, providing a hosted platform for creating advertising, promotional and marketing campaigns, programs and events; computer services, namely, providing a hosted platform for others to evaluate, analyze, strategize, develop, test, monitor, and report on advertising, promotional and marketing campaigns, programs and events using digital experiences to engage consumers; website and software application design and development services, in International Class 042.

 

The current identifications need clarification because they could include goods and/or services classified in other international classes. See TMEP §§1402.01, 1402.03.  In this case, the proper classification of the applicant’s consulting services and software platforms depends on their type and nature.

 

Accordingly, as more fully detailed below, the applicant must (1) add one or more International Class(es) to the application, and reclassify the goods and/or services therein, or (2) delete the goods and/or services from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If the applicant adds one or more International Classes to the application, the applicant must comply with the multiple-class requirements specified in this Office action. The wording in the recitation of services is unacceptable as indefinite and must be clarified. TMEP §1402.01. 

 

Issues Concerning the Identification of Services in International Class 035

The wording in the recitation of services is unacceptable as indefinite and must be clarified. TMEP §1402.01.  Based on the applicant’s description, the examining attorney cannot determine the kind, type or nature of the consulting services.  The language the applicant used fails to adequately describe these services such that the average person would readily understand what the services are. 

 

As an initial matter, the wording “related to” in the identification of services is indefinite and 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 identification must be specific and all-inclusive.  This wording is an open-ended term that is not acceptable because it fails to identify specific services.  See TMEP §1402.03(a).  For example, a wide variety of consulting services could be “related to digital experience technology platform implementation, optimization, and measurement” including the service of “tracking and monitoring call volume in response to advertising campaigns for others for business purposes” a service which is properly classified in International Class 035, as well as “planning, design and implementation of computer technologies for others” which is properly classified in International Class 042.

 

In addition, design services are generally considered a technical service properly classified in International Class 042, not a business service classified in International Class 035.  As such, the applicant must clarify the kind, type and nature of identified design services.  Finally, the applicant must clarify the nature of the consumer experience consulting services.  The language the applicant used fails to adequately describe these services such that the average person would readily understand what the services are. 

 

Issues Concerning the Identification of Services in International Class 042

The current identification in International Class 042 appears to encompass some kind of computer software platform or application.  The language used to identify the computer software is indefinite because the Office cannot determine the type, kind or nature of the software nor the purpose and function of the program. 

 

Computer software is considered a product properly classified in International Class 009 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  Providing on-line non-downloadable software however is considered to be a computer service properly classified in International Class 042, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 041.  See TMEP §§1402.03(d), 1402.11(a)(xii).  In this case, the wording “providing a hosted platform” or “providing a hosted platform for others” does not indicate if the applicant’s software platform is non-downloadable or downloadable.  Therefore, to ensure proper classification of the noted software, the applicant must indicate whether its software program is considered a good that is prerecorded on media or downloadable, or whether it is providing a computer service featuring temporary use of non-downloadable software.

 

In addition, the applicant must also specify the purpose(s) or function(s) of the software program(s).  If the software is field-specific the applicant must also specify the field of use.  TMEP §1402.03(d).  Clarification of the purpose, function or field of use of the software is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

The applicant must amend the recitation to specify the common, ordinary commercial name of the goods and services.  If there is no common commercial name for the products and services, the applicant must adequately describe the nature of the goods and services, using wording that would be generally understood by the average person.  See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01.  In such a case, the applicant should describe the nature of the goods and services and their main purpose, as well as indicate the channel of trade, intended consumer and intended use(s). 

 

The applicant may amend the identification to substitute the following wording, if accurate:

 

Proposed identification for International Class 009:

 

Providing a downloadable software platform for use in creating advertising, promotional and marketing campaigns, programs and events; Providing a downloadable software platform for others to evaluate, analyze, strategize, develop, test, monitor, and report on advertising, promotional and marketing campaigns, programs and events using digital experiences to engage consumers; website and software application design and development services.

 

Proposed identification for International Class 035:

 

Business consulting for optimization and measurement of consumer digital experiences, namely, ___________________ [applicant must describe and specify the nature of the service using its common commercial name e.g. Design and development of marketing campaigns for others, Tracking and monitoring call volume in response to advertising campaigns for others for business purposes, Development of digital marketing strategies and concepts for others, Advertising agency specializing in the design and execution of experiential marketing programs, Analyzing and compiling business data for others to determine the perceived image of a product]; business consulting for consumer digital experiences, namely, ___________________ [applicant must describe and specify the nature of the service using its common commercial name e.g. Providing assistance in development of business strategies and creative ideation, Development of digital marketing strategies and concepts, Advertising agency specializing in the design and execution of experiential marketing programs].

 

Proposed identification for International Class 042:

 

Computer services in the nature of platform as a service (PAAS) services featuring non-downloadable computer software platforms for use in creating advertising, promotional and marketing campaigns, programs and events; Computer services in the nature of platform as a service (PAAS) services featuring non-downloadable computer software platforms for use by others to evaluate, analyze, strategize, develop, test, monitor, and report on advertising, promotional and marketing campaigns, programs and events using digital experiences to engage consumers; Software application design and development for others; Website design and development for others; Consulting services regarding the digital design, interaction design, and visual design of consumer digital experiences, namely, ___________________ [applicant must describe and specify the nature of the service using its common commercial name e.g. Providing graphic and multimedia design services for the purpose of promoting the goods and services of others]; Consulting for implementation and optimization of consumer digital experiences, namely, ___________________ [applicant must describe and specify the nature of the service using its common commercial name e.g. Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others].

 

PLEASE NOTE:  General Guidelines Regarding the Scope of Acceptable Identification Amendments

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.  The applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; for example, an applicant may amend an identification or recitation from the more general to the specific; it may not amend from the specific to the more general. TMEP §§1402.06(b).

 

The applicant however 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).   Thus, the applicant may not subsequently amend the identification to include any product or service that is not within the scope of the goods and/or services originally set forth in the application or a previously accepted identification amendment thereto.

 

Online Identification Reference Provided by the USPTO

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.

 

Requirements for a Multiple-Class Application

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least three (3) international classes; however, applicant submitted a fee(s) sufficient for only two (2) international classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for International Classes 035 and 042 only; if applicable, the applicant will need to submit an acceptable specimen for the goods in International Class 009.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant’s Response

There is no required format or form for responding to an Office action.  For this application to proceed further, the applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, the applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  The applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, the applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, Please see “Responding to Office Actions” and the informational video “Response to Office Action” on the USPTO’s website.

 

If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1)

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.  If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

If an applicant is initially represented by an attorney, and then later retains another attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

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.  If the applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If the applicant or its appointed attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 119

Telephone: 571-272-9706

Email: Michael.Tanner@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 3/7/2019 FOR U.S. APPLICATION SERIAL NO. 88210494

 

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 3/7/2019 (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.