| To: | Alibaba Group Holding Limited (nptm@nixonpeabody.com) |
| Subject: | U.S. Trademark Application Serial No. 88227657 - SCURALDATA - 074619-202 |
| Sent: | July 13, 2020 08:41:08 PM |
| Sent As: | ecom126@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88227657
Mark: SCURALDATA
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Correspondence Address:
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Applicant: Alibaba Group Holding Limited
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Reference/Docket No. 074619-202
Correspondence Email Address: |
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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:
This Office action is in response to applicant’s communication filed on June 1, 2020.
The Office has reassigned this application to the undersigned trademark examining attorney.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues.
Applicant must address all issues raised in this Office action. The issue raised in the previous December 20, 2019 Office action is as follows and has been resolved: provide definite identification of goods and services for certain entries.
The following is a SUMMARY OF ISSUES that applicant must now address:
• Identification of Goods and Services
• Domicile Address
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite and must be clarified to further specify the nature, use, or subject matter of certain entries, as set out in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identifications, if accurate. Suggested changes are in bold, deletions in strikethrough and required clarifications are within brackets:
CLASS 009: Scientific, nautical, photographic, optical, signaling, measuring, checking as in
supervision, life-saving apparatus and instruments, namely, telephones, punch clocks, time recording devices in the nature of time clocks, weighing equipment in the nature of scales and balances,
graduated rulers, electronic pocket translators, neon signs, electronic notice boards, transparency projection apparatus, kilometer recorders in the nature of odometers for vehicles, telescopes,
mechanisms for counter operated apparatus in the nature of point-of-sale terminals, fire extinguishers, acoustic alarms in the nature of smoke and fire alarms, eyeglasses, batteries, and exposed
files in the nature of exposed camera film; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric wires, electric
switches, electrolysis apparatus for electroplating purposes, and electrified fences, namely, electric fences; apparatus for recording, transmission or reproduction of sound or images; blank magnetic
data carriers and blank recordable optical discs, namely, CD-R, CD-RW, DVD-R and DVDRW discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment
and computers; software for processing electronic payments to and from others; authentication software, namely, software for authenticating the identity of a payer; computer software applications for
mobile devices and computers, namely, software for financial analysis, planning and management, software for securing and protecting data on mobile devices and computers, software for authenticating
user identification, software for controlling access to and communications with mobile devices and computers; software applications for use with mobile devices, namely, software for use in database
management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of
shopping, purchasing, communication, product and service reviews, entertainment, health and fitness, lifestyle, media and video, music and audio, photography and social network; computer software
that may be downloaded from a global computer network for posting information, creating electronic product catalogs, responding to requests and placing and fulfilling orders for products, services
and business opportunities via local and global computer networks, for use in document management, for searching, browsing and receiving transmissions of text, electronic documents, graphics and
audiovisual information on local and remote area networks and global computer networks, on intranets, or on directories of information available on computer networks, for use in software development
and web authoring, for use in exchanging information via global computer networks and online from a computer database and the internet, for business use for financial management, financial planning,
business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances, and marketing information
management, for data mining, for high-speed massive e-commerce data processing, and for data customization, all of the foregoing for use by third parties in connection with an interactive website in
the field of e-commerce; downloadable computer software applications for use with mobile devices and computers, namely, software for use in database management, for use as a spreadsheet, for word
processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of e-commerce, data management, customer
relationship management, entertainment, education and telecommunications provided via the Internet; on-line downloadable electronic publications in the nature of
magazines, articles, brochures, leaflets, datasheets, informational materials, instructional materials in the field of business, e-commerce, information technology, cloud computing,
telecommunications, the Internet, business and e-commerce training, business, sales, marketing and financial management provided online; instant messaging software; file sharing
software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless and telecommunication networks; computer software for processing
images, graphics, audio, video and text; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring
children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable cloud-computing software for deploying virtual machines to a cloud computing platform, managing
virtual machines on a cloud computing platform; downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; downloadable computer software
which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for
accessing, viewing and controlling remote computers and computer networks; computer software for use in the search and retrieval of computerized information from global information networks and
network systems about hobbies, collectibles, auctions and products; data storage programs, namely, software used for the storage of electronic data and documents and data on hard discs, compact
discs, tapes and optical discs; computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal portable media players;
mobile telephones; smart phones; digital cameras; battery chargers; computer workstations comprising computers and computer monitors; servers, namely, computer servers; computer and
telecommunications networking computer hardware; computer network adaptors, switches, routers, hubs; wireless and wired modems and communication cards and devices, namely, cable modems, computer fax
modem cards, external modems, internal modems, modem cables, modems; laptop holders in the nature of protective sleeves and carrying cases, computer bags; fire-extinguishing apparatus; downloadable
computer software for use in the field of business for financial management and financial planning; computer hardware and firmware for use in the field of business for financial management and
financial planning; computer software for use with global positioning system (GPS) navigation systems for navigation, route guidance and electronic mapping; computer software for use with route
planners, electronic maps and digital dictionaries for navigation and translation purposes; satellite-aided navigation systems in the nature of automobile navigation system featuring interactive
digital map displays, interactive instructions and user generated information; compact discs featuring music; computer programs and computer software for financial management, financial planning,
business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances and marketing information
management, all in the field of e-commerce and business; digital music files downloadable from the Internet; telecommunications apparatus, namely, VOIP phones, network
telephones, electronic facsimile machines, portable digital electronic device for sending and receiving electronic mails, and instant messaging communication tool in the nature of portable
telecommunication instant messaging devices; mouse pads; mobile phone handsets; mobile phone accessories, namely, battery chargers, cases, covers, ear phones, headsets and hands-free calling devices;
downloadable computer game software; downloadable motion pictures and movies in the field of aircrafts, automobiles, buildings, natural scenery and
pets; downloadable motion pictures and movies in the field of children's entertainment, family entertainment, drama, action, adventure and fantasy and
music provided via the internet and wireless devices; alarm monitoring systems; security cameras; mobile radio and television broadcasting units, namely, transmitting and
receiving apparatus for radio and television broadcasting and for long-distance transmission; television broadcasting equipment, namely, video cameras, film cameras, monitors, flat panel display
screens, audio enabled monitors, audio recorders, video recorders, electronic switchers for audio and video signals, cables for the transmission of sounds
and images, lights for use with video cameras and film cameras, camera lenses, camera tripods, camera cases, blank videotape, audio mixing boards and video editing computer hardware; cameras; video
cameras; headphones; ear pieces, namely, ear buds; speakers, namely, loud speakers; global positioning system (GPS) apparatus and equipment, namely, GPS systems; downloadable computer game programs,
electronic and video games programs and computer game software game programs provided via the Internet; liquid crystal
displays for telecommunications and electronic equipment; set top box; remote control for radios, televisions, stereos, computers, video recorders, audio systems and playback machines; spectacles and
sunglasses; electronic digital signboards; magnetically encoded bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; electronic book readers
CLASS 035: Advertising services; business administration services; providing office functions;
administration of customer loyalty programs and incentive award programs that provide discounts, coupons, vouchers and special offers for the goods of others and promoting the goods
of others, namely, providing rebates and administrative processing thereof; advertising services provided via the Internet; preparing television and radio advertisements; accountancy services;
auctioneering; consultation relating to trade fairs; public opinion polling; data processing services; provision of business information via global computer networks; advertising agency services;
advertising services provided for others; database management; compilation of information into computer databases in the field of business and e-commerce; business consulting services in the field of
e-commerce; business marketing consulting services in the field of web based events, conferences, training programs, learning programs, and seminars; business marketing consulting services in the field of delivering web-based knowledge; business marketing consulting services in the field of online collaboration and
collaboration technologies; business consulting services in the fields of sales and marketing; business management services, namely, business project management services in the
field of the development, set up, staging, production, recording, monitoring and follow-up for web based events, conferences, training programs, learning programs and seminars; market research
and business consulting services in the field of business and e-commerce; business consultancy services relating to business issues concerning facilitating the transaction of business via local and
global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; providing consumer information
concerning the goods and services of others via local and global computer networks; business consultancy services in the field of online marketplace operations being global
computer web sites where third parties can offer and source goods and services, place, determine the status of and fulfill trade leads and orders, enter into contracts and transact business;
providing computerized online ordering services featuring a wide variety of general consumer, business, and industrial {specify field, i.e. concrete, furniture, machine}
products and merchandise of others; advertising agencies, namely, promoting the goods and services of others via local and global computer networks; international import and export agency services;
rental of advertising space on communication media; online trading services in which sellers post products to be auctioned and bidding is done via the Internet, and providing online business
evaluation relating thereto; online retail store services featuring a wide variety of consumer goods of others; providing an online business directory of third party web sites listings featuring {indicate subject matter, i.e. restaurants, bars, a wide variety of consumer goods} to facilitate business
transactions; business consultancy services in the field of operating an electronic marketplace for the buyers and sellers of goods and services on a global computer network; business assistance for
others concerning business issues relating to facilitating business transactions between buyers and sellers, namely, providing buyers with information
about sellers, goods, and/or services via local and global computer networks; corporate business management consultancy services; marketing and promotion services; publication of publicity
materials; marketing services, namely, providing videos to promote vacant premises; dissemination of advertising materials, updating of advertising materials, and compilation of advertisements for
use as web pages on the Internet; rental of advertising space; data processing services via computers; providing information concerning commercial sales, providing business
information, providing a database of information pertaining to the promotional products industry; telephone answering service; auctioneering provided on the Internet; personnel management; provision
of commercial sales, business, advertising and promotional information through a global computer network and via the Internet; presentation of goods of others for retail purposes
via the Internet, namely, retail store service featuring a wide variety of consumer goods of others; the bringing together, for the benefit of others, of a variety of consumer goods,
excluding the transport thereof, enabling customers to conveniently view and purchase those goods from a general merchandise Internet web site particularly specializing in the
marketing of the sale of goods and services of others; the bringing together, for the benefit of others, of a variety of consumer goods, excluding the
transport thereof, enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunication networks in the field of clothing, lingerie, cosmetics, jewelry, watches, music and media products, food and beverages, home entertainment electronics, home appliances, phones, PDAs, MP3
players, video games, consoles, books, crafts, furniture, tools, house wares, photographic equipment, computers, kitchen wares, toys, sporting goods, bikes and automobiles; the bringing together, for
the benefit of others, of a variety of consumer goods, excluding the transport thereof, enabling customers to conveniently view and purchase those goods
from retail in the field of clothing, lingerie, cosmetics, jewelry, watches, music and media products, food and beverages, home entertainment electronics, home appliances, phones, PDAs, MP3 players,
video games, consoles, books, crafts, furniture, tools, house wares, photographic equipment, computers, kitchen wares, toys, sporting goods, bikes and automobiles; retail store
and wholesale store services in the field of bleaching preparations and other substances for laundry use, leather bleaching preparations, fabric softeners for laundry use, cleaning, polishing,
scouring and abrasive preparations, shining preparations, abrasive cloth, polishing paper, glass cloth, glass paper, floor wax, shoe wax, polish for furniture and flooring, detergents other than for
use in manufacturing operations and for medical purposes, dry-cleaning preparations, canned pressurized air for cleaning and dusting purposes, color-removing preparations, varnish-removing
preparations, wallpaper cleaning preparations, windscreen cleaning liquids, air fragrancing preparations, joss sticks, soaps, medicated soap, perfumery, extracts of flowers, essential oils, massage
gels other than for medical purposes, sunscreen preparations, sun-tanning preparations, cosmetics, lipsticks, lipstick cases, cosmetic preparations for skin care, cosmetic preparations for slimming
purposes, adhesives for cosmetic purposes, nail care preparations, make-up removing preparations, shampoos, dry shampoos, shampoos for pets, hair lotions, after-shave lotions, shaving preparations,
dentifrices, dental bleaching gels, mouth washes not for medical purposes, hair spray, hair dyes, antiperspirants, deodorants for human beings or for animals, pharmaceutical and veterinary
preparations, vaccines, sunburn ointments, sanitary preparations, sterilizing preparations, solutions for contact lenses, panty liners, remedies for foot perspiration, dietetic food and substances
adapted for medical or veterinary use, yeast for pharmaceutical purposes, sugar for medical purposes, royal jelly dietary supplements, food for babies, dietary supplements for humans and animals,
nutritional supplements, vitamin preparations, tanning pills, slimming pills, tobacco-free cigarettes for medical purposes, plasters, materials for dressings, surgical cloth, surgical implants,
material for stopping teeth, teeth filling material, dental wax, mouthwashes for medical purposes, disinfectants, preparations for destroying vermin, fungicides, herbicides, rat poison, repellents
for dogs, telephones, mobile phone handsets, mobile phone accessories, electronic and telecommunications goods, automobile navigation systems, satellite navigational apparatus, global positioning
system (GPS) navigation devices, navigational instruments, computer hardware and computer software, batteries, battery chargers, apparatus and instruments for recording, receiving, transmitting
and/or reproducing data, information, pictures, images and/or sound, surgical, medical, dental and veterinary apparatus and instruments, obstetric apparatus, X-ray apparatus for medical purposes, hot
air therapeutic apparatus, electric blankets for medical purposes, testing apparatus for medical purposes, blood testing apparatus, hearing aids for the deaf, hearing protectors, massage apparatus,
air pillows for medical purposes, air cushions for medical purposes, physical exercise apparatus for medical purposes, vaporizers for medical purposes, fumigation apparatus for medical purposes,
thermal packs for first aid purposes, armchairs for medical or dental purposes, artificial limbs, eyes and teeth, orthopedic articles, suture materials, supportive bandages, babies' bottles, tongue
scrapers, X-ray photographs for medical purposes, precious metals, jewelry, precious stones, printed matter, stationery, magnetically and non-magnetically encoded cards, furniture, picture frames,
household and kitchen utensils, glassware, porcelain and earthenware, textiles, clothing, footwear, headgear, laces and embroidery, buttons, ribbons, pins and needles, artificial flowers, carpets,
rugs, games and electronic toys, chemicals used in industry, chemicals used in science, chemicals used in photography, chemicals used in agriculture, paints, varnishes and lacquers, personal hygiene
products, hair and body lotions, cleaning and bleaching preparations, lubricants, fuels, candles, ironmongery and small items of metal hardware, machines and machine tools, cutlery, razors and hand
tools, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, spectacles and sun glasses, surgical and medical apparatus and instruments,
apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, firearms, fireworks, silverware, horological and
chronometric instruments, musical instruments, magazines, cards, paper and cardboard products, namely, computer paper, cardboard boxes, paper office stationery, pictures, typewriters and office
requisites, packaging materials, rubber and plastics for manufacturing use, packing and insulating materials, leather and imitations of leather, handbags, purses, wallets, leather holders, bags,
luggage, umbrellas, mirrors, ropes, string, nets, tents, yarns and threads for textile use, coat hangers, place mats, dressmaker's articles, bed and table covers, playthings and sporting articles,
foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa,
sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non-alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers'
articles and matches; direct mail advertising services; purchasing and procurement services, namely, buying and selling agency services in the nature of purchasing a wide variety of consumer,
business and industrial products and services for others, and selection of goods and procurement of goods for individuals and businesses, namely, purchasing of a wide variety of consumer, business
and industrial products and services for individuals and businesses; online ordering services featuring a wide variety of consumer goods of others; retail department store services; retail
supermarket services; secretarial services; provision of statistical information for business purposes; organization of exhibitions for commercial or advertising purposes;
business assistance services, namely, preparing marketing mailing lists and rental of advertising material in the nature of marketing mailing lists; business investigation; business administration
consultation services in the field of processing of sales made on the Internet; business networking referral services, namely, promoting the goods and services of others by passing business leads and
referrals among group members; personnel placement; import-export agency services; arranging newspaper subscriptions for others; document reproduction in the nature of photocopying
services; transcription, namely, conference call, message and stenographic transcription; rental of office equipment; customer relationship management; business management services, namely, administration of businesses engaged in electronic commerce; business management and administration services, namely, administration of promotional
sponsorship programs; accounting services; charitable services, namely, organizing and conducting volunteer programs and community service projects; providing a website featuring an online
marketplace on a global computer network by which third parties can offer goods and services, place and fulfill commercial orders in the field of e-commerce and online ordering services featuring a wide variety of general consumer, business, and industrial {specify field, i.e. concrete, furniture, machine}
products and merchandise; providing a website featuring an online marketplace on a global computer network by which third parties can negotiate contracts
with service providers, buyers and sellers in the field of e-commerce and engage in online ordering featuring a wide variety of general consumer, business, and industrial
{specify field, i.e. concrete, furniture, machine} products and merchandise, and transact business in the field of e-commerce and online ordering featuring
a wide variety of general consumer, business, and industrial products and merchandise; rental of sales stands; provision of commercial and business contact information; search engine
optimization for sales promotion; web site traffic optimization; pay per click advertising; commercial intermediation services, namely, negotiation and settlement of commercial transactions for third
parties, business management advisory services relating to franchising, provision of commercial and business contact information; business management for freelance service providers; negotiation and
conclusion of commercial transactions for third parties; updating and maintenance of data in computer databases; business project management services for construction projects; providing business
information via a web site; import-export clearance agencies namely, customs clearance services
CLASS 038: Telecommunications services, namely, providing telephone communication, Internet telephony services, local and long distance network telephony, electronic facsimile communication transmissions and data featuring encryption and decryption,
electronic transmission of electronic mails, and instant messaging communication services; telecommunications services, namely, transmission and delivery of digital data, photographs, audio files,
data, information and image signals by means of a global computer network, cable television, radio and satellite transfer, all in
particular for navigation systems, route planners and the use of electronic maps; providing web-based multimedia teleconferencing and videoconferencing services that allow
simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; providing customers with multiple user access to a global
computer network to access online reports regarding the performance, effectiveness, and status of web-based applications, teleconferences, videoconferences, and meetings; providing users with secure
remote access via the Internet to private computer networks; providing information in the fields of secured transmission of data and information; consulting services in the fields of secured
electronic data and information transmission services; providing online collaboration services, namely, providing multiple user access to global computer network which allows users to access
applications, platforms, jointly-shared documents, data, task lists, and discussion forums; Internet broadcasting services; Internet service provider services; provision of telecommunication access
and on-line communications links to computer databases, and other local and global webpages via the Internet and world-wide web; electronic communication services, namely,
information transmission via electronic communication networks; interactive telecommunications services, namely, transmission of voice, audio, visual images, audio-visual content, text and SMS
messages, electronic documents, and data by communication networks; telecommunication of information in the nature of transmission of database information via telecommunication
networks; providing telecommunication connections to the Internet or databases; communication by computer terminals; communication by fibre optic networks; electronic transmission of messages and
images by computer; facsimile transmission; paging services; rental of modems; transmission of data by electronic means; rental of telecommunication equipment; electronic message sending, receiving
and forwarding services; electronic exchange of voice, data, audio, video, text and graphics stored in databases accessible via computer and telecommunication networks; instant
messaging services; mobile phone communication services; transmission and delivery of data by electronic means; electronic transmission and delivery of mail messages, still picture and moving picture
information, namely, characters, messages, music and images, telegrams, information, and data by electronic, telephone, telegraph, cable, computer and satellite means; transmission, broadcast and
reception of audio, video, still and moving images and data via telecommunication means whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging services;
telephone communication and video and web conferencing services; electronic order transmission services; video conferencing services; electronic bulletin board services, namely,
providing an electronic bulletin board for real-time interactive talk in the nature of communication among users between a computer terminal and an electronic board for transmission of still picture
and moving picture information and voice information, including characters in the field of general interest; providing online electronic bulletin boards and message boards for
transmission of messages among users concerning business and e-commerce; provision of online discussion forums for transmission of messages among computer users concerning business and e-commerce;
television broadcasting services; broadcasting and transmission of radio and television programs; music broadcasting services over the internet; transmission of music, films,
interactive television programs, videos, electronic computer games via a global computer network or the internet; electronic transmission of information by
communications networks in the field of online shopping and general retail services; video-on-demand transmission services; news agency services for electronic transmission; providing access to
computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing multiple user access to a computer
database containing electronic publications, bulletin boards, database and information accessible via computer; providing online chat room services for transmission of messages
among computer users concerning business and e-commerce; providing multiple user access to global computer information networks for the transfer and dissemination of a wide range of information;
providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business
opportunities; communication services, namely, text and numeric wireless digital messaging services; transmission of information by data communications for assisting decision making; transmission of
information through video communication systems; web conferencing services; electronic communication services, namely, virtual chat rooms established via text messaging; providing electronic bulletin
boards for the posting and transmission of messages among and between computer users concerning consumer products, services and business leads and opportunities; providing an online electronic
interactive bulletin board for the posting, promotion, sale and resale of items in the field of clothing, personal care products, computers, computer equipment, computer software, telecommunication
apparatus, game machines, food and beverages via a global computer network; electronic transmission of e-mail services; transmission, broadcasting and streaming of audio and video via computers
connected to computer networks and global communication network; providing computer access to online interactive bulletin boards and databases; providing access to electronic
bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; teleconferencing services, namely, distant
video and telephone conferencing; providing access to local and global computer networks featuring electronic calendar, address book and notes feature, via local and global
computer networks; providing facilities and equipment for video and telephone conferencing; providing computer links in the nature of on-line communication links which
transfer the web site user to third party web sites to facilitate e-commerce and real world business transactions; computerized communication network security services in the nature of providing
private and secure real time electronic communication over a computer network; and consultancy, information and advisory services provided in connection with the aforesaid services
CLASS 041: Education, namely, providing live and online seminars and conferences in the field of business and e-commerce;
providing of training in the field of business and e-commerce; entertainment, namely, providing online video games and online non-downloadable playback of digital music;
organizing community sporting and cultural events; publication of texts, books and journals; organizing sporting events, namely, baseball games, soccer matches, tennis tournaments, basketball games,
golf tournaments and swimming competitions; organizing cultural events and shows; publication of newspapers, magazines and periodicals containing diagrams, images and photographs; education, namely,
training courses and instructional classes in the field of telecommunications hardware and software, operation of computers, computer programming, web site design, e-commerce, cloud computing,
financial management, business management and advertising; providing education, instruction and training via online interactive and non-interactive courses, classes, workshops and seminars in the
field of business and e-commerce; design of educational courses, namely, development of curriculum and educational examinations for others in the field of business and e-commerce; entertainment
provided via electronic and digital interactive media, namely, providing online computer games; electronic games services provided by means of the Internet, namely, providing online computer games;
providing information about education and entertainment; providing information in the field of sports, sporting events, recreation activities, leisure activities, cultural activities and educational and cultural exhibitions; providing online non-downloadable electronic publications, namely, books, journals, newsletters and articles in the field of business and
e-commerce; arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting musical concerts; arranging, organizing, hosting and conducting events
and competitions for education purposes, namely, providing educational conferences, competitions and symposia in the field of business and e-commerce; entertainment services, namely, production and
distribution of a game show; entertainment ticket agency services; providing entertainment information and education information via a computer database or the Internet;
providing non-downloadable prerecorded digital music via the Internet; providing non-downloadable prerecorded digital music from Internet web sites in the
field of MP3 recordings; entertainment and education services, namely, conducting courses of instruction relating to planning, production and distribution of sound, images, digital music, movies,
live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music
entertainment services, namely, live music concerts; rental of sound recordings; entertainment in the nature of on-going television programs in the fields of business and e-commerce; producing
entertainment, educational, documentary and news television programs in the fields of business and e-commerce for broadcasting; news reporters services; providing news in the field of sporting or
cultural events, and in the field of current events reporting provided by satellite television transmission, the Internet or radio; production of television and radio programs and film production;
production of television programs; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose, namely, production of
animation movies rendered by means of a global computer network; provision of facilities for recreational activities, sporting and gymnasium; live
performances by a musical band; night club services; discotheques; fashion shows for entertainment purposes; night club services relating to entertainment; education services, namely, arranging and
conducting educational conferences, conventions, seminars and training workshops in the field of business, e-commerce, telecommunications, computers, computer programs, cloud computing, web site
design, financial management and advertising; providing research in the field of education and information about education; organizing and conducting exhibitions for cultural or educational purposes;
art exhibition services; art gallery services, namely, rental of artwork; training services in the field of occupational health and safety, and environmental
conservation; provision of cigar appreciation classes, wine tasting classes; providing research in the field of education; providing information relating to research in the field of education;
arranging, organizing, planning and running of educational seminars in the field of business and e-commerce; animal training; direction in producing broadcasting programs, namely, production of
television and radio programs and film production; instructional services, namely, providing training in operation of audiovisual machines and equipment used for the production of broadcasting
programs; providing sound and film recording studios; providing sports facilities; providing facilities for movies, shows, plays, music or educational training; entertainment
booking agencies, namely, booking of seats for shows and sports events; rental of motion pictures; rental and leasing of musical instruments; rental and leasing of television programs in the nature
of provision of non-downloadable television programs via video on-demand service; rental and leasing of television sets; lending library services; lending library services
featuring archives; subtitling services, namely, preparing subtitles for movies; sign language interpretation services; rental of entertainment software,
namely, rental of computer game software; providing non-downloadable music via the internet and non-downloadable movies in the field of animation, children's entertainment,
family entertainment, comedy, drama, documentary, action, adventure, fantasy and horror via a video-on-demand service; providing online computer games; entertainment services,
namely, conducting contests; rental of pre-recorded video tapes; rental and leasing of game machines; rental of arcade game machines; photography; translation; language interpretation; providing
informational educational and training programs in the field of risk management; lottery services; provision of facilities for entertainment shows and performances, namely, performance venues,
studios, sets, dressing rooms; providing informational educational and training programs for {indicate specific group, i.e. teachers, engineers, etc.} for
certification in the field of information technology, computer security, business management, law, financial management and financial planning; providing a website featuring
on-line non-downloadable videos in the field of news, sports, entertainment, popular culture, lifestyles, music, artwork, education, information technology, finance, architecture, law, psychology,
business administration, marketing, financial literacy and financial planning; providing tutoring in the field of business, e-commerce, music, artwork, education, information technology, finance,
architecture, law, psychology, business administration, marketing, financial literacy and financial planning; and providing consultancy, information and advisory services in connection with the
aforesaid services
CLASS 042: Scientific and technological services, namely, research and design in the field of telecommunication software and
hardware design, Internet technology, the design of websites for advertising, software design, and e-commerce software and hardware design, and industrial research and analysis services in the field
of e-commerce computer software networking systems; industrial research services in the field of business and e-commerce; scientific and technological services, namely, research and design in the field of computer networking hardware related to telecommunication and navigation signals; design and development of computer hardware and software; software as a service (SaaS)
services featuring software for monitoring and management of computer-based information systems and networks; software as a service (SaaS) services featuring software for database management, data
analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; providing temporary use of on-line non-downloadable cloud
computing software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; cloud
computing featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management; providing temporary use of
on-line non-downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; providing virtual computer systems and virtual computer environments
through cloud computing; computer services, namely, design and development of computer systems for transmitting information, data, documents and images over the Internet; application service provider
(ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services featuring software for web-based conferencing, audio conferencing, electronic
messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software
applications; providing technical support services, namely, providing backup computer programs and facilities, troubleshooting of computer software problems to end users by means of telephone or
global computer network; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and
engage in social networking; computer technology advice provided to Internet users by means of a support hotline; computer services, namely, creating computer network-based
indexes of information, sites and resources on computer networks; providing search engines for the Internet; design of computers, notebook computers, laptop computers,
portable computers and handheld computers; design of personal digital assistants and personal media players for others; design of mobile telephones and smart phone for others; design of digital
cameras for others; computer services, namely, computer system administration for others; computer programming; computer systems integration services; computer systems analysis services; computer
programming in relation to the defense against virus, namely, computer virus protection services; computer system software services, namely, design and development of online computer software
systems; providing direct connection services between computer users for exchanging data, namely, providing temporary use of online non-downloadable software for the exchange of data; computer
software design; computer system design; design and development of webpages for others; hosting webpages for others; hosting computer application software for others for use in searching and
retrieving information from databases and computer networks; computer software consultancy; computer services, namely, providing customized searching services in the nature of searching and
retrieving information from computer databases and websites at the customer's specific request via the Internet; creating, maintaining and hosting websites for others; creating an online community for registered users to develop and collaborate on address books and calendars; software design and development for others; computer services, namely, hosting online interactive public calendars, address books and notes that allow multiple participants to share information in the nature
of event schedules, facility reservations and transportation requests via local and global computer network; customized searching of computer databases and websites, namely, providing customized
online web pages featuring user-defined information which includes online links to third party web sites; customized searching of computer databases and websites, namely, providing search engines for
obtaining data from computer files on a global computer network; computer and electronic signal coding and decoding conversion for others; computer code conversion for others; conversion of physical
data and documents into electronic media format; testing and evaluation services of the goods and services of others to assure compliance with industry standards; architectural design services;
interior design services of buildings, offices and apartments; computer security services, namely, the provision of user certification authority services for others to ensure the security of
transmitted information, namely, providing a website that features technology that enables the secure exchange of information by users; providing technological information about computers and
computer networks in the field of business and e-commerce; computer security risk management programs, namely, updating of computer software relating to computer security and prevention of computer
risks; computer security information, knowledge and testing services, namely, computer security consultancy in the field of scanning and penetration testing of computers and networks to assess
information security vulnerability; providing quality assurance services in the field of computer software; computer security service, namely, restricting access to and by computer networks to and of
undesired web sites, media and individuals and facilities; providing platform as a service (PAAS) services, namely, providing web-based computer software platform for complaint submission; computer
consultancy in the field of data security; consultancy concerning securing telecommunications technology via computer information technologies; electronic document and e-mail
authentication services, not for identification verification; computerized communication network security services, namely, providing temporary use of non-downloadable computer
software for conducting private and secure electronic communication over a private or public computer network; providing technological information in the field of Internet, the world wide web, and
computerized communication network security; computer security consultancy, namely, consulting services in the fields of Internet, world wide web and computerized communication network security
services, information security services; authentication in the field of computer security, namely, electronic signature verification services using technology to authenticate user
identity; computer services in relation to on-line authentication of electronic signatures, namely, design, development, and implementation of software for authenticating digital signatures;
off-site data backup; electronic data storage services, namely, archiving electronic business documents, personal documents and corporate documents;
providing information on computer technology and programming via a web site; cartography services; rental of computer software; consultancy, information and advisory services relating to the
aforesaid services
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.
DOMICILE ADDRESS
A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) 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 are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Faith Beaudry-Torres/
Faith Beaudry-Torres
Law Office 126
(571) 270-3044
faith.beaudry-torres@uspto.gov
RESPONSE GUIDANCE