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: 4/21/2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 18, 2019.

 

In a previous Office action dated March 13, 2019, the applicant was required to satisfy the following requirement:  amend the identification of goods and services.

 

Upon further review of the application, it has been determined that an additional requirement must issue because additional entries in the identification of goods require specification.  The trademark examining attorney sincerely apologizes for any inconvenience that the subsequent refusal and/or requirement may cause the applicant. 

 

SUMMARY OF ISSUES that applicant must address:

• IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

The wording “computer consultation in the field of computer system security” in the identification of goods and services is indefinite and must be clarified because this entry is unacceptable as it is overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, this wording could include “consultation about the repair of computer hardware” in Class 37 and “consultation about the maintenance and updating of computer software” in Class 42. Therefore, this wording needs to be clarified.

 

Applicant may substitute the following wording, if accurate: 

 

            Class 9

 

Downloadable anti-virus software for computers; computer software for anti-virus protection, managing data security, and authenticating user identification; computer programs for blocking and removal of computer viruses, providing security features to scan, detect and delete, remove and guard against potentially harmful or annoying software viruses, in the nature of Trojans, worms, malware, botnets and rootkits; computer programs, namely, intrusion detection, intrusion prevention and virus protection software for scanning incoming and outgoing e-mail messages for computer viruses and malware; computer software for scanning and monitoring computer network connections for signs of unauthorized entry, for creating and maintaining firewalls and for scanning computer data storage devices for computer viruses and other malware for use in private computer networks and corporate computer networks; software for protecting computers against computer security threats; anti-malware software, namely, software for protection against, detection of and removal of malware; downloadable software for preventing, identifying, and removing malware, adware, unwanted toolbars, browser hijackers and potentially unwanted programs (PUPs); downloadable software for ensuring the security of computer systems; VPN (virtual private network) hardware; downloadable VPN (virtual private network) operating software

 

Class 37

 

Providing information in the field of computer repair services via an online website

 

Class 42

 

Computer software design of software for scanning and removing computer viruses and malicious software; computer virus protection services in the nature of monitoring of security system, namely, monitoring of computer virus protection systems for protecting data and information from unauthorized access; computer consultation in the field of computer system security, namely, {specify services of these types in class 42 e.g., Consultation about the maintenance and updating of computer security software}; providing information in the field of anti-malware software installation via an online website; consulting in the field of information technology; maintenance and updating of computer software relating to ensuring the security of computer systems; cloud computing services, namely, providing temporary use of online non-downloadable software for providing computer system security; authentication, issuance and validation of digital certificates of authentication or encryption of a digital communication, or authentication of a digital signature in an electronic transaction or communication

 

Class 45

 

Identification verification services, namely, providing authentication of personal identification information in the nature of digital authentication of the end user and the computer; password management, namely, personal identification number (PIN) selection for others; monitoring of computer virus protection systems for protecting personal property

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

If applicant does not timely respond to this Office action, the following services will be deleted from the application:

 

Class 42

 

Computer consultation in the field of computer system security

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following goods and services only:

           

Class 9

 

Downloadable anti-virus software for computers; computer software for anti-virus protection, managing data security, and authenticating user identification; computer programs for blocking and removal of computer viruses, providing security features to scan, detect and delete, remove and guard against potentially harmful or annoying software viruses, in the nature of Trojans, worms, malware, botnets and rootkits; computer programs, namely, intrusion detection, intrusion prevention and virus protection software for scanning incoming and outgoing e-mail messages for computer viruses and malware; computer software for scanning and monitoring computer network connections for signs of unauthorized entry, for creating and maintaining firewalls and for scanning computer data storage devices for computer viruses and other malware for use in private computer networks and corporate computer networks; software for protecting computers against computer security threats; anti-malware software, namely, software for protection against, detection of and removal of malware; downloadable software for preventing, identifying, and removing malware, adware, unwanted toolbars, browser hijackers and potentially unwanted programs (PUPs); downloadable software for ensuring the security of computer systems; VPN (virtual private network) hardware; downloadable VPN (virtual private network) operating software

 

Class 37

 

Providing information in the field of computer repair services via an online website

 

Class 42

 

Computer software design of software for scanning and removing computer viruses and malicious software; computer virus protection services in the nature of monitoring of security system, namely, monitoring of computer virus protection systems for protecting data and information from unauthorized access; providing information in the field of anti-malware software installation via an online website; consulting in the field of information technology; maintenance and updating of computer software relating to ensuring the security of computer systems; cloud computing services, namely, providing temporary use of online non-downloadable software for providing computer system security; authentication, issuance and validation of digital certificates of authentication or encryption of a digital communication, or authentication of a digital signature in an electronic transaction or communication

 

Class 45

 

Identification verification services, namely, providing authentication of personal identification information in the nature of digital authentication of the end user and the computer; password management, namely, personal identification number (PIN) selection for others; monitoring of computer virus protection systems for protecting personal property

 

See TMEP §718.02(a). 

 

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.  

 

TELEPHONE RESPONSE ENCOURAGED

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571)270-0122

Odette.Martins@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 4/21/2019 FOR U.S. APPLICATION SERIAL NO. 88214103

 

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 4/21/2019 (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.