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
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Always Connect Solutions, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
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 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.