To: | IDEMIA Identity & Security USA LLC (tmdoctc@fr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88233957 - 420460081001 |
Sent: | 3/11/2019 3:46:32 PM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88233957
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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: IDEMIA Identity & Security USA LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 3/11/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’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).
SUMMARY OF ISSUES
IDENTIFICATION OF SERVICES REQUIRES AMENDMENT
The wording “Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources, including the integration of computer systems and networks” is indefinite and must be clarified because the nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Computer services, namely, digital identity authentication and verification and identity management” is indefinite and must be clarified because the nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “technical support, namely, the monitoring of computer and network systems for others and the periodic upgrading of computer software for others” is indefinite and must be clarified because the nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must amend this wording to make clear that the services are in the nature of computer security services for protecting data and information from unauthorized access to be properly classified in Class 42.
The wording “Computer security services, namely, connecting data stores for data verification and authentication” is indefinite and must be clarified because the nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Amended Wording
Applicant may adopt the following, with additions in bold and deletions in strikethrough if accurate:
Class 42: Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources, in the
nature of including the integration of computer systems and networks; Computerized services, namely, digital identity authentication and verification services, namely, providing user authentication services using single sign-on technology for online software applications; and computerized identity management
services in the nature of electronic monitoring of personally identifying information to detect identity theft via the internet; Computer services, namely, providing deployment
and management of computer networks and wireless computer networks for others; and technical support services, namely, the monitoring of computer and
technological functions of computer network systems for others and the periodic upgrading of computer software for others; Providing an on-line network environment that features
technology that enables users to share and access data; Computer security services, namely, providing a members-only website featuring technology which provides members with the
ability to access connecting data stores for the purposes of data verification and authentication
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.
PARTIAL ABANDONMENT ADVISORY
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: “Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources, including the integration of computer systems and networks;” “Computer services, namely, digital identity authentication and verification and identity management;” “technical support, namely, the monitoring of computer and network systems for others and the periodic upgrading of computer software for others;” and “Computer security services, namely, connecting data stores for data verification and authentication.” See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following services only: “Computer services, namely, providing deployment and management of computer networks and wireless computer networks for others;” “Providing an on-line network environment that features technology that enables users to share and access data;” and “Providing an on-line network environment that features technology that enables users to share and access data.” See TMEP §718.02(a).
ASSISTANCE
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.
Caroline L. Moran
/Caroline L. Moran/
Trademark Examining Attorney
Law Office 125
(571) 272-3255
caroline.moran@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.