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: 4/29/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF THE 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).

 

AMENDED CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

Certain entries in the Identification of Goods and Services are indefinite and require further specification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Further, certain entries in the identification of services are misclassified and must be properly classified in the appropriate International Class. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Class 9

 

Specifically, for each entry in International Class 9 that contains software, each entry is indefinite because the nature of the software applicant provides is insufficiently clear. Applicant must specify whether this software is downloadable or recorded.

 

Additionally, the entries “computer software” and “computer software in the field of cryptographic network security and data security functions” are indefinite and applicant must specify the function of the software provided.

 

Finally, the entry “downloadable electronic publications” is indefinite and applicant must specify the nature of the goods provided as well as the field.

 

Class 42

 

The entries “computer services”, “Internet security services”, “computer consultation”, and “turnkey e-commerce services” are indefinite because the nature of the services applicant provides is insufficiently clear. Applicant must further clarify the nature of these services by specifying them in greater detail.

 

The entry “providing hosted electronic mail and instant messaging services” is indefinite because the services provided are unclear. Applicant must further specify how the services are provided, e.g., hosting an electronic website to provide the services.

 

The entries “notification and delivery of software updates”, “providing user authentication services in e-commerce transactions”, “monitoring of computer systems for security purposes”, “monitoring of computer networks for security purposes”, and “providing security threat management systems, namely, monitoring and tracking of security vulnerability and problems in computer software products, the Internet, and computer networks” are indefinite because applicant must clarify the nature of these services. Specifically, applicant must clarify that these services are offered via computerized and electronic means.

 

The entry “authentication of identity” is indefinite and must be clarified because the nature of these service is insufficiently clear. Specifically, applicant must clarify that these are a form of computer security services.

 

The entry “application hosting” is indefinite because the nature of the services applicant provides is insufficiently clear. Applicant must further specify the services, such as application service provider, namely, computer application hosting of others.

 

The entry “web hosting” is indefinite and must be clarified because the nature of the services provided is insufficiently clear. Applicant must clarify these services, such as “website hosting”.

 

Class 45

 

The following services are classified incorrectly: Authentication, issuance and validation of digital certificates; identification verification services, namely, providing authentication of business identification information; providing user identity authentication services in ecommerce transactions; providing authentication of identity.  Applicant must amend the application to classify the services in International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Additionally, the entry “computer security services in the nature of providing an internet trust center, namely, computer security assurance and administration of digital keys and digital certificates” is no longer an acceptable identification and deletion of this entry is recommended.

 

Further, the entries “identification verification services, namely, providing authentication of business identification information; providing user identity authentication services in ecommerce transactions; providing authentication of identity” are indefinite and require further specification. Applicant must clarify these services as forms of computer security services or that they are computerized and electronic in nature.

 

The following is an acceptable Identification of Goods and Services, which applicant may adopt, if accurate (modification in bold):

 

CLASS 9         {Specify downloadable or recorded} Computer antivirus software; {Specify downloadable or recorded} computer software for database management in the field of cryptographic network security and data security functions; {Specify downloadable or recorded} computer software for providing network, Internet, and computer security; {Specify downloadable or recorded} computer software for providing online identity protection and parental control; {Specify downloadable or recorded} computer software for providing intrusion detection and prevention; {Specify downloadable or recorded} computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; {Specify downloadable or recorded} internet security software, including computer software for use in the monitoring and control of computer and online activity; {Specify downloadable or recorded} computer software for providing online transaction security; {Specify downloadable or recorded} fraud protection software; {Specify downloadable or recorded} computer optimization software; {Specify downloadable or recorded} computer software to prevent, diagnose, and repair computer problems; {Specify downloadable or recorded} computer maintenance software; {Specify downloadable or recorded} computer software for the back-up, storage, restoration and recovery of data, folders, and files; {Specify downloadable or recorded} enterprise security software; {Specify downloadable or recorded} firewall software; {Specify downloadable or recorded} privacy control software; {Specify downloadable or recorded} content filtering software; computer hardware; computer peripherals; computer hardware appliances that provide fire wall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions; {Specify downloadable or recorded} computer software {specify function, e.g., use as a spreadsheet, and if software is content- or field-specific, the content or field of use}; {Specify downloadable or recorded} computer software {specify function, e.g., use as a spreadsheet} in the field of cryptographic network security and data security functions; {Specify downloadable or recorded} computer software for integration of information logic and data between computer networks; {Specify downloadable or recorded} computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; {Specify downloadable or recorded} computer software, namely, encryption software to enable secure transmission of digital information, namely, confidential, financial and credit card information over the Internet, as well as over other modes of communication between computing devices; {Specify downloadable or recorded} computer software to integrate managed security services, namely, public key infrastructure (PKI) services, digital certificate issuance, verification, management and enterprise software integration, with existing communications networks, software and services; {Specify downloadable or recorded} computer software for use in analysis and reporting of firewall log data; computer software for detecting, blocking, and intercepting malware and other threats to computer hardware and software; {Specify downloadable or recorded} computer software for encrypting and authenticating data; {Specify downloadable or recorded} computer software for encryption; {Specify downloadable or recorded} computer software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; {Specify downloadable or recorded} computer software platform for bridging Internet and telephony services and enabling users to communicate and transact business faster across multiple networks via wire line phones, mobile phones, personal computers, PDAs and other personal electronic devices; {Specify downloadable or recorded} computer software platform for providing faster Internet connections, website resolution and e-mail deliveries; {Specify downloadable or recorded} cloning software, namely, software for cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring personal computers; {Specify downloadable or recorded} computer software for the creation of virtual private network; {Specify downloadable or recorded} computer software and downloadable computer software, namely, utility software; {Specify downloadable or recorded} computer utility software for removal of computer applications and software; {Specify downloadable or recorded} utility software for facilitating computer use at remote locations and for facilitating communications among mobile users over networks; {Specify downloadable or recorded} computer software, namely, middleware for interfacing client applications and networked or host based databases; {Specify downloadable or recorded} computer software and downloadable computer software for use in updating other computer software; {Specify downloadable or recorded} computer software for use in networking applications; {Specify downloadable or recorded} computer software for sending and receiving facsimile transmissions from computers and notebook computers; {Specify downloadable or recorded} computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network security measures for remote computer users; {Specify downloadable or recorded} computer software for file management and transfer; {Specify downloadable or recorded} computer software for telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; {Specify downloadable or recorded} computer communications software for use with a home or remote office for connecting computer network users to global networks; {Specify downloadable or recorded} computer software and databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; {Specify downloadable or recorded} computer programs for data communications applications, and for the encryption and authentication of electronic information; {Specify downloadable or recorded} computer software for identity security; {Specify downloadable or recorded} computer software for authentication and identity management information security; computer software for digital information and data access; {Specify downloadable or recorded} computer software for detecting identity fraud; {Specify downloadable or recorded} computer software and firmware for the management, transmission, and storage of data and information; {Specify downloadable or recorded} computer software for use in networking computers; {Specify downloadable or recorded} computer software for use in operating electronic mail; {Specify downloadable or recorded} computer software for use in monitoring computers for security purposes; {Specify downloadable or recorded} computer software for use in vulnerability scanning of networks and websites; {Specify downloadable or recorded} computer software for use in detecting malware computer software for use with computer servers for controlling and managing server applications; {Specify downloadable or recorded} computer software for use in accessing databases; user manuals and instructional guides supplied with all of the foregoing; downloadable electronic publications, namely, {indicate specific nature of publication} in the field of {indicate subject matter of publication}

 

CLASS 42       Computer services, namely, {applicant to specify the services, e.g., encrypted data recovery services}; Internet security services, namely, {applicant to specify the services, e.g., providing temporary use of non-downloadable computer anti-virus software}; electronic storage of data; computer {applicant to specify services, e.g., software} consultation; computer consultation regarding computer networks and internal computer networks, security services for computer networks and internal computer networks, namely, installation, design and customization; on-line technical support services, namely, troubleshooting of computer hardware and software problems; technical and customer support services, namely, troubleshooting of computer software problems; computer services, namely, detection of viruses and threats; design and implementation of software and technology solutions for the purposes of protecting against counterfeiting, tampering and diversion, and to ensure the integrity of genuine websites; technical support services, namely, providing back-up computer programs and facilities; updating of computer software for others; computer virus protection services; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, data recovery services; computer software installation services; computer programming; electronic notification and delivery of software updates; research services relating to computer hardware and computer software; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, databases management, and anti-virus protection and monitoring security systems; providing information in the field of network and Internet security; providing technical information in the field of computer software applications; computer services, namely, providing information concerning the encryption and authentication of electronic data; providing information concerning authentication of user identification data for e-commerce transaction security; consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; computer support services, namely, technical support and software update services; computer consulting services related to computer products and services; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; software as a service for use in scanning networks and websites to detect and identify vulnerabilities and malware; providing consultants to help deploy, supervise and manage information technology projects; providing information in the field of information technology relating to communications devices, computers, computer hardware, computer software, computer peripherals, and computer networks; Computer services, namely, hosting an on-line web site for others for electronic mail and instant messaging; computer services, namely, providing search engines for obtaining data on a global computer network; computer consulting services in the field of security integration, network security, network architecture, encryption technology, and computer security; security verification of computer network firewalls, servers and other network devices from unauthorized access, namely, analyzing global computer information network and internal computer network vulnerability; application service provider, namely, computer application hosting of others; website hosting; turnkey e-commerce services, namely, {specify services, e.g., providing user authentication services using single sign-on technology for e-commerce transactions}; Computer security services, namely, electronic signature verification services using technology to authentication of identity; issuance and management of digital certificates for authentication or encryption of a digital communication, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer network and providing technical and customer support in connection therewith; development, design, implementation, testing, analysis, and consulting services in the field of security, access, authorization, authentication encryption, and identification systems for computers, computer hardware and computer networks; computer systems analysis in the field of security, access, authorization, authentication encryption, and identification systems for computers and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creation and implementation of procedures and practices for issuance and management of digital certificates; computer related services, namely, managed computer network and Internet security services, namely, public key infrastructure (PKI) verification, authentication, distribution and management, digital certificate issuance, verification and management, and enterprise software integration; providing computerized and electronic user authentication services in e-commerce transactions; electronic monitoring of computer systems for security purposes; electronic monitoring of computer networks for security purposes; providing security threat management systems, namely, electronic monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information in the fields of global computer network and local area network Internet security, preventing computer viruses, preventing computer threats, computer hardware and software applications in security; identity theft protection services, namely, fraud prevention in the form of computerized and electronic monitoring of personal and financial information; Authentication, issuance and validation of digital certificates; computerized and electronic identification verification services, namely, providing computerized and electronic authentication of business identification information; Computer security services, namely, using technology to provide user identity authentication services in ecommerce transactions; Computer security services, namely, using technology to provide authentication of identity

 

CLASS 45       personal background investigation services in order to authenticate identity

 

Scope Advisory. 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).

 

ID Manual. 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.

 

GUIDELINES FOR RESPONDING TO THIS OFFICE ACTION

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

 

 

/Luke Cash Browning/

Luke Cash Browning

Trademark Examining Attorney

Law Office 127

(571) 270-5767

Luke.Browning@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 4/29/2019 FOR U.S. APPLICATION SERIAL NO. 88289816

 

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 4/29/2019 (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.