Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

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:  October 22, 2019

 

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.  

 

The issue(s) raised in the previous March 27, 2019 Office action are as follow:  Request for Information, and Requirement for a Foreign Registration in International Class 009. 

 

Based on applicant’s response, dated, September 27, 2019, the trademark examining attorney notes that the following requirement(s) have been satisfied:  applicant provided information on the use of the goods, and confirmed applicant’s intent to rely on Section 44(e) as a basis for registration.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Amend the Identification of Goods and Services to include 01/2019 NICE changes

 

Applicant should note the following additional ground for refusal.

 

The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, an amendment was made to the TM ID MANUAL on 01/01/2019 requiring that computer software goods indicate the specifications indicated below.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

IDENTIFICATION OF GOODS

Applicant must clarify the wording as set forth below because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The identification for software/computer programs/mobile applications and/or firmware in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

The following are examples of acceptable identifications in International Class 9:  “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications in International Class 41:  “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.”  Finally, the following are acceptable identifications in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”

 

Applicant may adopt the following wording, if accurate: 

International Class 009:

Downloadable Computer software for processing audio; downloadable computer programs for processing audio; downloadable computer application software for processing audio; downloadable computer software platforms for processing audio; downloadable computer software development tools for computer programmers; electronic publications concerning computer programs for processing audio, downloadable computer software and computer programming language for processing audio; source  codes for processing audio; open source computer source codes for processing audio; computer hardware; computer firmware; firmware memory devices; device drivers; software drivers

International Class 041:

 

Training and education related to computer software for processing audio, firmware and hardware

 

International Class 042:

 

Providing online non-downloadable Computer programming for processing audio, design and development of computer software and computer programs for processing audio; design and development of computer codes for processing audio; design and development of computer firmware and firmware systems; provision of information regarding computer programs, computer software and computer programming language for processing audio, computer firmware; support services for computer programming; providing online non-downloadable web programming software and web programming support services, cloud computing and storage services; computer consulting services; expert consulting services within the information and communication technology sectors; application services provider services; platform as a service (PaaS); computer code conversion for others; installation of firmware; configuration of computer firmware; configuration of computer hardware

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Upon the applicant’s satisfactory amendment of the identification of goods and services above, the application will be suspended pending receipt of the foreign registration.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/C. Dionne Clyburn/

C. Dionne Clyburn

LO 110

571-272-9358

dionne.clyburn@uspto.gov

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 22, 2019 for

U.S. Trademark Application Serial No. 88248117

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/C. Dionne Clyburn/

C. Dionne Clyburn

LO 110

571-272-9358

dionne.clyburn@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 22, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”