Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 31, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 10, 2019.

 

In a previous Office action dated April 22, 2019, applicant was required to satisfy the following requirements:  amend the identification of goods and services, meet all multiple-class application requirements.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

All arguments and evidence included in the April 22, 2019 Office action are incorporated herein by reference.

 

PLEASE NOTE: A review of the merits of the application and a search of the Office’s database of registered and pending marks for potentially conflicting marksboth remain deferred until applicant responds to the final issues maintained and continued in this Office action.  TMEP §704.02.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of Goods and Services – Final
• Multiple-Class Application Requirements – Final

 

IDENTIFICATION OF GOODS AND SERVICES – FINAL

 

International Class 9

 

The identification for software in International Class 9 is indefinite and must be clarified to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software 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).

 

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.

 

International Class 38

 

The wording “telecommunications” in the identification of goods for International Class 38 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.  In particular, this wording could encompass “telecommunications reseller services, namely, telecommunications air time brokerage services” in International Class 36, and “telecommunications, namely, telecommunications consultation” in International Class 38, and “telecommunications technology consultancy” in International Class 42.

 

The wording “telecommunication services, namely, providing electronic message alerts” is indefinite and must be clarified because the specific nature of the services is unclear on the basis of the wording provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 39

 

The wording “transport” 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.  In particular, this wording could encompass “transport in the nature of transportation logistics services, namely, arranging the transportation of goods for others” in International Class 35 and “transport of persons and goods” in International Class 39.

 

The wording “travel arrangement” is indefinite and must be clarified because the specific nature of the services is unclear on the basis of the wording provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “travel assistance services, namely, providing information about emergency services for people in transit” is classified incorrectly.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Further, the wording must be clarified because it is too broad and could include services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “travel assistance services, namely, providing information about medical emergency response services for people in transit” in International Class 44 and “travel assistance services, namely, providing information about emergency response services for people in transit” in International Class 45.

 

International Class 42

 

The wording “providing a website with information about safety and emergency services” is classified incorrectly.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Further, the wording must be clarified because it is too broad and could include services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “providing a website with information about medical safety and emergency response services” in International Class 44 and “providing a website with information about personal safety and emergency response services” in International Class 45.

 

International Class 45

 

The wording “personal and social services rendered by others to meet the needs of individuals” must be clarified because it is too broad and could include services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “personal and social services rendered by others to meet the needs of individuals, namely, entertainment services in the nature of organizing social entertainment events” in International Class 41, “personal and social services rendered by others to meet the needs of individuals, namely, providing social meeting, banquet and social function facilities” in International Class 43, “personal and social services rendered by others to meet the needs of individuals, namely, music therapy for social assimilation purposes” in International Class 44, and “personal and social services rendered by others to meet the needs of individuals, namely, personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes” in International Class 45.

 

The wording “monitoring trip activity, vehicle location, and other data for safety and emergency response purposes,” “monitoring of mobile devices by a remote monitoring center for assisting in the dispatch of emergency public health and security services and notification to third parties,” and “monitoring of mobile devices by a remote monitoring center to provide urgent personal support services to others” is indefinite and must be clarified because the specific nature of the services is unclear on the basis of the wording provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:

 

International Class 9:

 

Downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content or field-specific, the content or field of use}; downloadable computer software for detecting trip delays, vehicle location, and trip anomalies; downloadable computer software for safety and incident detection; downloadable computer software for {applicant to specify function, e.g., requesting, managing, etc.} emergency assistance; downloadable computer software for {applicant to specify function, e.g., for providing access to the Internet, connecting computer network users, etc.} that enables customers to communicate with others; downloadable computer software that monitors and analyzes data to detect trip irregularities; downloadable emergency notification system software; downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposes

 

International Class 35:

 

Transport in the nature of transportation logistics services, namely, arranging the transportation of goods for others

 

International Class 36:

 

Telecommunications reseller services, namely, telecommunications air time brokerage services

 

International Class 38:

 

Telecommunications, namely, {applicant to specify nature of services, e.g., telecommunications consultation, transfer of data by telecommunications, etc.}; telecommunication services, namely, providing electronic message alerts via the internet; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of the detection of anomalies in vehicle and trip activity; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to customers; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to local third-party motorized vehicle operators, couriers, messengers, and passengers using mobile phones; telecommunication services, namely, providing electronic message alerts over the internet; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of a changed status or condition in vehicle trip activity

 

International Class 39:

 

Transport of persons and goods; travel arrangement, namely, coordinating travel arrangements for individuals and for groups; travel assistance services, namely, providing information about emergency services for people in transit

 

International Class 41:

 

Providing temporary use of non-downloadable game software; personal and social services rendered by others to meet the needs of individuals, namely, entertainment services in the nature of organizing social entertainment events

 

International Class 42:

 

Electronic monitoring and reporting of data related to trip delays, vehicle location, and trip anomalies, using computers or sensors; providing a website with information about safety and emergency services; providing temporary use of on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content or field-specific, the content or field of use}; providing temporary use of on-line non-downloadable computer software for detecting trip delays, vehicle location, and trip anomalies; providing temporary use of on-line non-downloadable computer software for safety and incident detection; providing temporary use of on-line non-downloadable computer software for emergency assistance; providing temporary use of on-line non-downloadable computer software that enables customers to communicate with others; providing temporary use of on-line non-downloadable computer software that monitors and analyzes data to detect trip irregularities; providing temporary use of on-line non-downloadable emergency notification system software; providing temporary use of on-line non-downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; providing temporary use of on-line non-downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; providing temporary use of on-line non-downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposes; telecommunications technology consultancy

 

International Class 43:

 

Personal and social services rendered by others to meet the needs of individuals, namely, providing social meeting, banquet and social function facilities

 

International Class 44:

 

Travel assistance services, namely, providing information about medical emergency response services for people in transit; providing a website with information about medical safety and emergency response services; personal and social services rendered by others to meet the needs of individuals, namely, music therapy for social assimilation purposes

 

International Class 45:

 

Security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals, namely, {applicant to specify nature of services, e.g., personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes, case management services in the nature of coordination of legal, social and psychological services for domestically abused persons, etc.}; monitoring trip activity, vehicle location, and other data in the nature of {applicant to specify, e.g., status updates, etc.} for personal safety and emergency response purposes; providing a website featuring information about options to maintain personal safety in the event of a detected trip irregularity; emergency response alarm monitoring assistance services, namely, monitoring of mobile devices by a remote monitoring center for assisting in the dispatch of emergency public health and security services and notification to third parties; monitoring of mobile devices by a remote monitoring center to provide urgent personal security support services to others; travel assistance services, namely, providing information about emergency response services for people in transit; providing a website with information about personal safety and emergency response services

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – FINAL

 

The application identifies goods and services that are classified in at least ten (10) classes; however, applicant submitted fees sufficient for only five (5) classes.  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 fees already paid, or (2) submit the fees for each additional class.

 

RESPONSE GUIDELINES:

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

ASSISTANCE

 

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. 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@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 July 31, 2019 for

U.S. Trademark Application Serial No. 88286577

 

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. 

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@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 July 31, 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.”