UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/16/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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

 

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 GOODS AND SERVICES

 

IDENTIFICATION OF GOODS AND SERVICES

 

International Class 9

 

The wording “software” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass downloadable or recorded software in Class 9, as well as non-downloadable software in Class 42.

 

The wording “automatic ticket dispensers” in the identification of goods is indefinite and must be clarified because it is unclear whether the goods are electronic in nature.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “attendance machine, namely, electronic readers and controllers for controlling access to a premises” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “selfie lenses for mobile phones” in the identification of goods is indefinite and must be clarified because the nature of the lenses is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “electronic chip cards for computers; electronic chip cards for mobile phones” in the identification of goods is indefinite and must be clarified because it is unclear whether the cards are sold blank.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant has classified “anti-theft alarms for vehicles” in International Class 9; however, the proper classification is International Class 12.  Therefore, applicant may respond by (1) adding International Class 12 to the application and reclassifying these goods in the proper international class, (2) deleting “anti-theft alarms for vehicles” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

International Class 37

 

The wording “construction” in the identification of services is indefinite and must be clarified because the nature of what is to be constructed is not specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 42

 

The wording “cloud computing” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “software as a service” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “platform as a service” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 45

 

The wording “housekeeping services” in the identification of services for International Class 45 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass “cleaning of residential houses” in Class 37 as well as “home organization services, namely, sorting and organizing household belongings” in Class 45.

 

Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods/services.  The curly brackets, e.g. {  }, contain instructions to be followed and/or suggested wording.  Brackets (or instructions) should not be a part of the amended, final ID.  If there is wording in applicant’s version of the identification of goods/services that should be removed, it will be shown with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9:    “Data processing apparatus; computer hardware; Apparatus for image recognition and processing; apparatus for face detection and tracking; apparatus for face identification and orientation; apparatus for face attributes detection; apparatus for gesture recognition and analysis; apparatus for body orientation; apparatus for body's motion detection; smartglasses; smartwatches; downloadable software for image recognition and processing; downloadable software for face detection and tracking; downloadable software for face identification and orientation; downloadable software for face attributes detection; downloadable software for gesture recognition and analysis; downloadable software for body orientation; downloadable software for body's motion detection; humanoid robots with artificial intelligence; computer game software, recorded; downloadable gesture recognition software; downloadable computer software platforms for image recognition and processing; downloadable computer software platforms for face detection and tracking; downloadable computer software platforms for face identification and orientation; downloadable computer software platforms for face attributes detection; downloadable computer software platforms for gesture recognition and analysis; downloadable computer software platforms for body orientation; downloadable computer software platforms for body's motion detection; wearable computers in the nature of smartwatches; wearable computers in the nature of smartglasses; interactive touch screen terminals; time recording apparatus; automatic electric ticket dispensers; face recognition devices, namely, cameras, video cameras and computer hardware used for facial scanning and recognition; attendance tracking machine, namely, electronic card readers and electronic controllers for controlling access to a premises; wearable activity trackers; apparatus for transmission of communication; smartphones; monitoring devices for security of buildings and facilities; virtual reality headsets; electronic advertising displays; camcorders; selfie camera lenses for mobile phones; selfie lenses for cameras; cameras for photography; teaching robots; blank electronic chip cards for computers; blank electronic chip cards for mobile phones; video screens; anti-theft alarms for vehicles; anti-theft alarms for buildings”;

 

Class 12:   “Anti-theft alarms for vehicles”;

 

Class 37:    “Building construction supervision; construction consultancy; building construction; installation, maintenance and repair of computer hardware; electric appliance installation and repair; machinery installation, maintenance and repair; installation and maintenance of medical equipment; motor vehicle maintenance and repair; vehicle breakdown repair services; burglar alarm installation and repair; cleaning of residential houses”;

 

Class 42:    “Technical research for image recognition and processing; technical research for face detection and tracking; technical research for face identification and orientation; technical research for face attributes detection; technical research for gesture recognition and analysis; technical research for body orientation; technical research for body's motion detection; research and development of new products for others; computer software design; computer programming; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; computer system analysis; computer system design; conversion of data or documents from physical to electronic media; information technology consultancy; consulting services in the field of cloud computing for image recognition and processing; consulting services in the field of cloud computing for face detection and tracking; consulting services in the field of cloud computing for face identification and orientation; consulting services in the field of cloud computing for face attributes detection; consulting services in the field of cloud computing for gesture recognition and analysis; consulting services in the field of cloud computing for body orientation; consulting services in the field of cloud computing for body's motion detection; technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts;  software as a service (SAAS) featuring software for image recognition and processing; software as a service (SAAS) featuring software for face detection and tracking; software as a service (SAAS) for face identification and orientation; software as a service (SAAS) featuring software for face attributes detection; software as a service (SAAS) for featuring software gesture recognition and analysis; software as a service (SAAS) featuring software for body orientation; software as a service (SAAS) featuring software for body's motion detection; platform as a service (PAAS) featuring computer software platforms for image recognition and processing; platform as a service (PAAS) featuring computer software platforms for face detection and tracking; platform as a service (PAAS) featuring computer software platforms for face identification and orientation; platform as a service (PAAS) featuring computer software platforms for face attributes detection; platform as a service (PAAS) featuring computer software platforms for gesture recognition and analysis; platform as a service (PAAS) featuring computer software platforms for body orientation; platform as a service (PAAS) featuring computer software platforms for body's motion detection; electronic data storage”;

 

Class 45: “Guard services; physical security consultancy; monitoring of burglar and security alarms; chaperoning; housekeeping home organization services, namely, sorting and organizing household belongings; online social networking services; licensing of computer software being legal services; dating services”

 

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).

 

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.

 

MULTI-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 Section 1(b):

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes.  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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

 

/Katie Foss/

Trademark Examining Attorney

Law Office 125

571-272-4067

katherine.foss@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/16/2019 FOR U.S. APPLICATION SERIAL NO. 88284899

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/16/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.