To: | Reed Business Information Limited (tmcentral@pirkeybarber.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88257945 - CIRIUM - REPC012US |
Sent: | 4/3/2019 10:44:53 AM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88257945
MARK: CIRIUM
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Reed Business Information Limited
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 4/3/2019
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.” A suggested amendment within Class 9 is included below.
In particular, the wording “providing business and commercial information in the field of air travel, airline scheduling, airline analytics, airports, and airport analytics including such services provided electronically and over the internet or other computer networks” is indefinite because it is not clear whether “such services provided electronically and over the internet or other computer networks” refers to the services of providing business and commercial information or the services referenced as fields in the entry, i.e., “air travel, airline scheduling, airline analytics, airports, and airport analytics”. Applicant has also included the term “or” in the entry. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services; (2) the nature of the services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is unclear if the applicant will use the mark, or intends to use the mark, on all the services identified.
An application must specify, in an explicit manner, the particular services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “or” with “and” in the identification of services, if appropriate, or rewrite the identification with the “or” deleted and the services specified using definite and unambiguous language. A suggested amendment is included below.
Applicant repeats the wording “including such services provided electronically and over the internet or other computer networks” in several subsequent entries. For the reasons above, the use of the word “or” is indefinite and must be amended, and the entries should be amended to clarify whether the “such services” referenced are the provision of information services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). Suggested amendments are included below.
In addition, software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software. For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual. A suggested amendment within Class 42 is included below.
Applicant may substitute the following wording, if accurate:
Class 9: Downloadable computer software applications and downloadable software platforms for {specify function, e.g., “airline business operations management”, “flight scheduling”,
“airline data analytics”} relating to in the fields of the business of air travel, airline scheduling, airline
analytics, airports, and airport analytics; all of the aforementioned products directed to for the aviation industry
Class 35: Advertising services; provision of space on websites and mobile applications for
advertising goods and services; providing business and commercial information electronically and over the internet and other computer networks in the fields
of air travel, airline scheduling, airline analytics, airports, and airport analytics including such services provided electronically and over the internet or
other computer networks
Class 37: Provision of information electronically and over the internet and
other computer networks relating to the maintenance and repair of aircraft for the aviation industry, including such services provided electronically and
over the internet or other computer networks; all of the aforementioned services directed to the aviation industry
Class 39: Provision of information electronically and over the internet and
other computer networks relating to air travel and air transport for the aviation industry, including such services provided electronically and over the
Internet or other computer networks; all of the aforementioned services directed to the aviation industry
Class 41: Provision of information electronically and over the internet and
other computer networks relating to airshows, including such services provided electronically and over the Internet or other computer
networks
Class 42: Provision of information electronically and over the internet and
other computer networks relating to aircraft technology, aerospace technology, and space technology, including such services provided electronically and over
the Internet or other computer networks; Software as a Service (SaaS) services featuring software for performing data analytics as software as a service in the fields of aviation and travel; all of the aforementioned services directed to the aviation industry
Wording in bold indicates additions. Wording in bold, in
italics, and struck through indicates deletions. Wording in bold, in italics, and {in brackets} indicates that applicant must provide additional information in order for the entry to be
definite.
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
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 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.
/Ray Harmon/
Trademark Examining Attorney
Law Office 103
(571) 272-0386
raymond.harmon@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.