Offc Action Outgoing

ACS

Always Connect Solutions, LLC

U.S. TRADEMARK APPLICATION NO. 88291819 - ACS - 1014.002.TM

To: Always Connect Solutions, LLC (dave@progresspatent.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88291819 - ACS - 1014.002.TM
Sent: 4/26/2019 12:03:22 PM
Sent As: ECOM110@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

U.S. APPLICATION SERIAL NO.  88291819

 

MARK: ACS

 

 

        

*88291819*

CORRESPONDENT ADDRESS:

       DAVID R. MCKINNEY

       PROGRESS PATENT LAW, PLLC

       1225 W. BACALL ST.

       MERIDIAN, ID 83646

       

 

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: Always Connect Solutions, LLC

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

       1014.002.TM

CORRESPONDENT E-MAIL ADDRESS: 

       dave@progresspatent.com

 

 

 

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: 4/26/2019

 

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.

 

SUMMARY OF ISSUES:

 

  • AMENDMENT TO THE IDENTIFICATION OF GOODS & SERVICES REQUIRED
  • CLARIFICATION AS TO WHETHER COLOR IS A FEATURE OF THE MARK REQUIRED

 

SEARCH RESULTS

 

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).

 

However, applicant must respond to the issues below.

 

AMENDMENT TO THE IDENTIFICATION OF GOODS & SERVICES REQUIRED

 

The wording in the identification of goods and services is too broad and indefinite and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, the identification for software in International Class 09 is too broad and must be clarified to specify the type of software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  In this specific case, software can be classified in two international classes (International Classes 09 and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use).  Therefore, if the applicant’s Class 09 software is “downloadable” or “recorded on computer media,” the applicant must include this language in Class 09, as shown below. 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.

 

Additionally, in Class 42, the applicant must clarify the nature of its “cloud-managed networking and data plans” contemplated. A data plan typically identifies an agreement between a mobile carrier and a customer rather than a registrable service. Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of services.  In this case, however, because the nature of the services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id. Alternatively, the applicant can delete the wording at issue, as shown below.

 

Also, the applicant must further specify the nature of its “networking” services as well. Id. Please see below in bold, italics and underline for an amendment suggestion.

 

Similarly, in Class 42, the applicant must also clarify the nature of its “wireless and cellular connections” services contemplated. Id. Please see below in bold, italics and underline for an amendment suggestion.

 

Lastly, networked devices in the internet of things (IoT) include a wide variety of goods ranging from refrigerators to wearable activity trackers; therefore, the applicant must indicate the nature of the networked devices where indicated below, in part, to enable third parties to make likelihood of confusion determinations under Section 2(d). See TMEP 1402.01 et seq.

 

Applicant may substitute the following wording, if accurate: 

 

Class 09: Computer networking and wireless communication hardware, namely, mobile routers, branch routers, wireless access points, antennas and sim cards; Downloadable computer networking software for network routing, security, compliance, and management.

 

Class 42: Platform as a service (PAAS) featuring computer software platforms for internet of things (IoT) data collection, IoT data processing and data monitoring to test, manage, monitor, connect, control, integrate and operate IoT electronic devices, namely, {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.}; Platform as a service (PAAS) featuring computer software for use to connect and control IoT electronic devices, namely, {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.}; Computer security services, namely, providing secure cloud-managed networking and data plans for mobile applications, namely, restricting unauthorized network access by users without credentials; Providing temporary use of on-line non-downloadable software for secure machine-to-machine (m2m) wireless and cellular connections from multiple wireless carriers with unlimited or limited data thresholds to connect m2m devices into the internet of things (IoT), namely, {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.}.

 

SCOPE ADVISORY: 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).

 

ASSISTANCE: 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.

 

For information on how to identify the goods and services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”

 

CLARIFICATION AS TO WHETHER COLOR IS A FEATURE OF THE MARK REQUIRED

 

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not include a color claim or a mark description referencing color.  37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).

 

Applicant may respond to this requirement by satisfying one of the following:

 

(1)            If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing.  See TMEP §807.07(a)(i).  However, any other amendments to the drawing will not be accepted if they materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.14 et seq.  Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02. 

 

Description:  “The mark consists of the letters “ACS”, with the "C" formed partially surrounding a representation of an incomplete globe with lines.”

 

(2)       If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).  The following color claim and description are suggested, if accurate: 

 

Color claim: The colors white, light blue and dark blue are claimed as a feature of the mark.

 

Description: The mark consists of the light blue and dark blue letters “ACS”, with the "C" partially surrounding a representation of an incomplete dark blue globe with white lines.

 

See TMEP §807.07(b).

 

RESPONSE GUIDELINES

 

If the applicant has any questions, please email or telephone the trademark examining attorney with the specific 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 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.  

 

 

 

/Deborah Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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.

 

 

U.S. TRADEMARK APPLICATION NO. 88291819 - ACS - 1014.002.TM

To: Always Connect Solutions, LLC (dave@progresspatent.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88291819 - ACS - 1014.002.TM
Sent: 4/26/2019 12:03:27 PM
Sent As: ECOM110@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/26/2019 FOR U.S. APPLICATION SERIAL NO. 88291819

 

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 4/26/2019 (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.

 

 


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