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:  November 22, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 23, 2019.

 

In a previous Office action dated April 23, 2019, the applicant was required to satisfy the following requirements:  amend the identification of goods and/or services and comply with multiple class requirements, and submit a foreign registration. 

 

Based on applicant’s response, the trademark examining attorney notes that the applicant has submitted an acceptable foreign registration and the Section 1(b) basis has been deleted pursuant to applicant’s request.  See TMEP §§713.02, 714.04. 

 

However, the requirements for an acceptable and definite identification of goods and/or services and compliance with multiple class requirements are maintained and made FINAL. See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

 

IDENTIFICATION OF GOODS/SERVICES

 

The wording highlighted and discussed below in the identification of goods for International Class 9 must be clarified because it is indefinite and/or too broad and could include goods or services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Specifically, some of the software listed in International Class 9 must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d). Moreover, the purpose or function of some of the software is too vague and requires further description. The USPTO requires such specificity 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).

 

Applicant may adopt the wording below, if accurate. Specific instructions for the applicant are in bold italics text and suggested amendments are in bold text. Where bold text appears without any instructions, the applicant should note that the wording is indefinite and the suggested amendment in bold appears to accurately describe the goods.  If any of the examining attorney’s suggestions are not accurate, applicant is still required to amend the unacceptable wording to identify definite and properly classified goods.

 

Class 9: Computer hardware; downloadable and recorded computer software for public contact, communications and dispatch for use in the fields of law enforcement, security, criminal justice, public safety and emergency services; downloadable and recorded application software for public contact, communications and dispatch for use in the fields of law enforcement, security, criminal justice, public safety and emergency services; downloadable and recorded energy management software; downloadable computer software suite and mobile application software for use in providing market communication, utility meter management and mobile work management in the utility sector; downloadable computer software, namely, lease management software; downloadable {describe type of asset; see following example} real estate property asset management software; downloadable data transmission software; downloadable and recorded computer software, namely, lease management software, {describe type of asset; see following example} real estate property asset management software and data transmission software; downloadable computer software for use in developing and customizing computer software applications and computer software application user interfaces; downloadable computer software for storing, managing, tracking, analysing, and reporting data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support, and employee efficiency; downloadable and recorded computer software for {indicate what is analyzed, e.g. business information and financial information} analysis, database management and processing of electronic payments; downloadable and recorded computer software for {specify the actual function of software related to professional services and type of professional services (please note that the wording “providing professional services” would not be acceptable), the nature of the resources managed and the area of planning; see following examples} professional services, namely, for human resource and workforce management and business planning management; downloadable and recorded computer application software for smart phones, namely, software for {specify the actual function of software related to professional services and type of professional services (please note that the wording “providing professional services” would not be acceptable), the nature of the resources managed and the area of planning; see following examples} professional services, namely, for human resource and workforce management and business planning management; downloadable and recorded computer application software for wireless devices, namely, software for{specify the actual function of software related to professional services and type of professional services (please note that the wording “providing professional services” would not be acceptable), the nature of the resources managed and the area of planning; see following examples} professional services, namely, for human resource and workforce management and business planning management; downloadable and recorded software for document management, authoring and publishing; downloadable and recorded software for {clarify what is designed, created, maintained and accessed; see following example} designing and creating documents, and for maintaining, accessing and managing document databases; downloadable and recorded software for document storage and document retrieval; downloadable and recorded software for categorizing, searching and retrieving documents and data on internal computer network; downloadable and recorded mobile {describe type of process, e.g. business} process management software; downloadable and recorded {describe type of asset, e.g. inventory} asset management software; downloadable and recorded business management software; downloadable and recorded software for standardisation of business processes; data networks, namely, data processors and downloadable and recorded computer software for transmission and reception of data; downloadable electronic databases in the field of business management and business organization; downloadable and recorded software for the analysis of business data; downloadable and recorded education management software; downloadable computer software suite and mobile application software for use in providing student information management, schools management in the nature of {describe type of management, e.g. management of information about schools, for students}, education finance in the nature of {describe function in relation to finance, e.g. applying for educational financial aid}, parental engagement in the nature of {describe function, e.g. enabling communication among students, their parents and schools}, and for library management in the education sector; downloadable and recorded computer application software for smart phones, namely, for use in providing student information management, {see foregoing instructions and suggestions for the following wording} schools management, education finance, parental engagement, library management in the education sector; downloadable and recorded healthcare management software; downloadable computer software suite for use in providing patient triage, clinical content and patient {specify what is managed in relation to patients, e.g. healthcare information} management in the healthcare sector; downloadable and recorded closed circuit tv (cctv) software, for the operation of closed circuit tv systems; closed circuit tv (cctv) systems, comprised of cameras, video monitors, electronic data recorders, microphones and electronic controllers for the components of the systems; computer networks namely, computer hardware for telecommunications and downloadable and recorded computer software for providing telecommunication connection; cloud servers, namely, computer servers; internet servers and network servers; computer hardware to provide smart digital and software solutions, and computer tools and instruments to provide smart digital and software solutions, namely, computer hardware and downloadable software development tools; Downloadable electronic publications in the nature of pamphlets, brochures, manuals, and leaflets in the fields of human resources, business management, project management, financial management, procurement management, database management and database searching

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

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 CLASSES

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

CLOSING

 

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.  

 

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)

 

 

 

 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 November 22, 2019 for

U.S. Trademark Application Serial No. 88292878

 

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. 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 November 22, 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.”