To: | 6 Watch, Inc. (cliff@tagerIPlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88228686 - VSP - 726.03 |
Sent: | 3/16/2019 7:00:42 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88228686
MARK: VSP
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: 6 Watch, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 3/16/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
ISSUES APPLICANT MUST ADDRESS: On March 15, 2019, the trademark examining attorney and Clifford L Tager, Esq. discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
SUMMARY OF ISSUES
(1) Classification of Goods and/or Services Required
(2) Amendment of Identification of Goods and/or Services Required
(3) Clarification Required of the Number of Classes for Which Registration Is Sought
CLASSIFICATION OF GOODS AND/OR SERVICES REQUIRED
The application does not specify the classification of the goods and/or services. Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application. The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).
Specific guidance for this requirement has been provided below.
AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The identification of goods and/or services must be clarified because the wording “360 degree threat detection and alert system” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the goods is unclear. Applicant must use the common commercial or generic names for the goods, such as electric and electronic video surveillance installations, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).
Additionally, the wording “a system to detect potential threats within a defined area and alert a specified user group accordingly” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the goods is unclear. Applicant must use the common commercial or generic names for the goods, such as electric and electronic video surveillance installations, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).
Additionally, the wording “monitoring a defined area for detection of potential threats and alerting a specified user group accordingly” is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. It is overly broad because the wording could encompass services in more than one International Class, for example, computer security threat analysis for protecting data in Class 42 or monitoring of security alarm systems in Class 45.
Specific guidance for all requirements has been provided below.
Applicant may adopt the following wording, if accurate:
Class 9 – 360 degree threat detection and alert system in the nature of {specify common
commercial name for the goods, e.g., electric and electronic video surveillance installations}; a system to detect potential threats within a defined area and alert a specified user group
accordingly in the nature of {specify common commercial name for the goods, e.g., electric and electronic video surveillance};and monitoring a defined area for detection of potential
threats and alerting a specified user group accordingly
Class 42 – {Specify common commercial name for the services, e.g., Computer security threat analysis for protecting data} in the nature of monitoring a defined area for detection of potential threats and alerting a specified user group accordingly
Class 45 – {Specify common commercial name for the services, e.g., Monitoring of security alarm systems} in the nature of monitoring a defined area for detection of potential threats and alerting a specified user group accordingly
Stylized wording indicates changes.
These suggestions are merely illustrative, not exhaustive of all the types of goods and/or services and proper classifications thereof which applicant might have intended to identify. These suggestions are based upon the examining attorney’s review of the application and determination of some of the goods and/or services applicant is most likely to offer. If applicant intended to identify goods and/or services in classes outside of Classes 9, 42 or 45, applicant must so specify and classify these goods and/or services accordingly.
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.
CLARIFICATION REQUIRED OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods and/or services that could be classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
ADVISORY – MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that could be classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If 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/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Dana Dickson/
Examining Attorney
Law Office 113
(571) 270-7552
dana.dickson@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.