Suspension Inquiry

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION INQUIRY

Response Required

 

The USPTO must receive applicant’s response to this inquiry 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:  November 18, 2019

 

 

The trademark examining attorney is issuing this inquiry letter to determine whether the application should continue to be suspended. 

 

Status required regarding foreign registration/renewal.  The application was previously suspended until applicant provided a copy of a foreign registration from applicant’s country of origin or proof that the registration was renewed.  TMEP §§716.02(b), 716.05.

 

How to respond.  Applicant’s response to this inquiry should include either: 

 

(1) A statement that the foreign application or registration renewal is still pending, or
(2) A copy of the foreign registration or renewal document, including an English translation if the copy is not in English. 

 

TMEP §§716.05, 1003.04(c), 1004.01(a); see 37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

Click to file a response to this suspension inquiry.>

 

Once the reason for suspension has been resolved, the examining attorney will remove this

application from suspension and resume examination. 

 

REQUIREMENTS CONTINUED AND MAINTAINED:  The following requirements are continued and maintained:

 

• Identification of Goods and Services Amendment Requirement (see below)

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 9

 

The wording "Ethernet routers" is indefinite and must be clarified to specify the nature of the goods, e.g., "network routers", etc.

 

The wording "industrial Ethernet routers" is indefinite and must be clarified to specify the nature of the goods, e.g., "network routers", etc.

 

The wording "secure gateways" is indefinite and must be clarified to specify the nature of the goods, e.g., "gateway routers in the nature of computer control hardware", etc.

 

The wording "device servers, Power over Ethernet (PoE) injectors, and media converters" is indefinite and must be clarified to specify the nature of the goods. See below for suggestions.

 

The wording "computer software for managing a cyber security industrial communication platform comprised of routers, switches, routing gateways, modems, serial to Ethernet routing gateways, media converters, serial servers and hardened computers" is indefinite and must be clarified to specify that the software is downloadable, if accurate.

 

The wording "computer software for managing and monitoring a cyber security industrial computer network" is indefinite and must be clarified to specify that the software is downloadable, if accurate.

 

The wording "computer hardware and software for computer network monitoring and security" is indefinite and must be clarified to specify that the software is downloadable, if accurate.

 

The wording "computer hardware and software used for monitoring industrial network security" is indefinite and must be clarified to specify that the software is downloadable, if accurate.

 

Class 42

 

The wording "monitoring of a cyber security industrial computer network" is indefinite and must be clarified to specify the nature of the services. See below for suggestions.

 

The wording "monitoring of computer network systems for security purposes" is indefinite and must be clarified to specify the nature of the services. See below for suggestions.

 

The wording "installation of a cyber security industrial computer network" is indefinite and appears to be misclassified and belong in Class 37. Specifically, installation of computer hardware is in Class 37, and installation of computer software is in Class 42.

 

The wording "maintenance of a cyber security industrial computer network" is indefinite and appears to be misclassified and belong in Class 37. Specifically, maintenance of computer hardware is in Class 37, and installation of computer software is in Class 42.

 

The wording "computer training" is indefinite and misclassified and belongs in Class 41.

 

The wording "computer network training" is indefinite and misclassified and belongs in Class 41.

 

The wording "training in the field of cyber security industrial computer networks" is misclassified and belongs in Class 41.

 

The wording "training in the use and operation of cyber security industrial computer equipment" is misclassified and belongs in Class 41.

 

The wording "training in the use and operation of computer equipment and computer networks" is misclassified and belongs in Class 41.

 

 

Applicant may adopt the following identification, if accurate:

 

Class 9:           Ethernet switches, industrial Ethernet switches; Ethernet network routers; industrial Ethernet network routers; secure gateway routers in the nature of computer control hardware; hardened computers; computer hardware, namely, device network servers, Power over Ethernet (PoE) injectors, and media converters; computer hardware for a cyber security industrial computer platform; downloadable computer software for managing a cyber security industrial communication platform comprised of routers, switches, routing gateways, modems, serial to Ethernet routing gateways, media converters, serial servers and hardened computers; downloadable computer software for managing and monitoring a cyber security industrial computer network; computer hardware and downloadable software for computer network monitoring and security; computer hardware and downloadable software used for monitoring industrial network security

 

Class 37:         Installation of a cyber security industrial computer hardware network; maintenance of a cyber security industrial computer hardware network

 

Class 41:         Computer training, namely, training in the use of computers; computer network training, namely, training in the use of computer network hardware; training in the field of cyber security industrial computer networks; training in the use and operation of cyber security industrial computer equipment; training in the use and operation of computer equipment and computer networks

 

Class 42:         Technical support, namely, monitoring technological functions of a cyber security industrial computer network; diagnostic analysis of a cyber security industrial computer network; computer network design for others; computer network consulting services; computer network management; designing a cyber security industrial computer network for others; consulting services in the field of cyber security industrial computer networks; management of a cyber security industrial computer network; monitoring of computer network systems for system failure or decrease in performance; monitoring of the performance and physical structure of a cyber security industrial computer network; monitoring of computer network systems for security purposes, namely, for detecting unauthorized access or data breach; installation of a cyber security industrial computer network; maintenance of a cyber security industrial computer network; computer training; computer network training; training in the field of cyber security industrial computer networks; training in the use and operation of cyber security industrial computer equipment; training in the use and operation of computer equipment and computer networks

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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 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).

 

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.

 

• Multiple-Class Application Requirements (see below)

 

Advisory – MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 services that are classified in at least 4 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 fee or restrict the application to the number of classes covered by the fee 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

• Fee Requirement (see below)

 

INSUFFICIENT FEE

 

The application identifies goods and services that are classified in at least 4 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 fee already paid, or (2) submit the fees for each additional class.

 

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.  

 

 

/Bianca Allen/

Trademark Examining Attorney

Law Office 123

(571) 272-5667

bianca.allen@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 November 18, 2019 for

U.S. Trademark Application Serial No. 88281272

 

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. 

 

 

/Bianca Allen/

Trademark Examining Attorney

Law Office 123

(571) 272-5667

bianca.allen@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 November 18, 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.”