To: | HTW, Inc. (docketing@fisherbroyles.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88301273 - WE KNOW HOSPITALITY - 11843-T001US |
Sent: | 4/26/2019 7:22:58 PM |
Sent As: | ECOM119@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88301273
MARK: WE KNOW HOSPITALITY
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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: HTW, Inc.
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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 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 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).
IDENTIFICATION AND CLASSIFICATION OF SERVICES
The identification of services needs clarification because it is indefinite and may contain services classified in more than two classes. For instance applicant’s maintenance services could include software maintenance in Class 42 or maintenance in the nature of repair of computer hardware in Class 37. In addition, applicant’s “monitoring of security systems” could include monitoring of computer systems for detecting unauthorized access or data breach in Class 42, or monitoring of security alarm systems in Class 45. Therefore, applicant must clarify these services so that they can be properly classified. In addition, applicant must clarify the vendor management services to indicate the industry or type of facility that they are provided for. TMEP §1402.01, §§1403.02 et seq. The underlined wording in the identification below is indefinite and/or improperly classified and is followed by suggested wording in brackets and in bold. Applicant may adopt any or all of the following identifications and classifications, if accurate:
Class 35
Vendor management services relating to computer systems, computer hardware and computer software [must indicate the industry or type of facility that the vendor management is provided for, e.g., Vendor management services for the hospitality industry relating to computer systems, computer hardware and computer software]
Class 37
Technical support services, namely, troubleshooting in the nature of the repair of computer hardware; providing consulting with regard to the hardware maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems; IT technical support, namely, providing computer hardware consulting with regard to the hardware maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems
Class 42
Domain name system (DNS) filtering services for others [must clarify the nature of the filtering services, e.g., Domain name system (DNS) filtering services for others in the nature of domain name search services, namely, conducting online computerized searches for the availability of domain names]; computer services, namely, web traffic filtering; Computer services, namely, intrusion detection and protection, and security information and event management [nature of the services is unclear, applicant must indicate that these are computer security services and must clarify the wording security information and event management because they do not identify a type of computer security service, e.g., computer security services, namely, intrusion detection and prevention, providing information on computer security technology and security breach event management in the nature of computer security breach consulting]; Computer network design, infrastructure, monitoring and management [must clarify the nature of the services, e.g., Computer network design, computer network infrastructure design, technical support, namely, monitoring technological functions of computer network systems and computer network management for others]; Computer disaster recovery planning; Computer services, namely, computer system administration for others; IT consulting services; IT integration services; Technical support services, namely, troubleshooting of computer hardware and software problems [must clarify the nature of the troubleshooting could encompass services in Class 37 or 42, e.g., Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems {ok in Class 42} or Technical support services, namely, troubleshooting in the nature of the repair of computer hardware {properly in Class 37}], providing consultation with regard to the selection, operation, and maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems [these services are unclear and could encompass services in multiple classes, e.g., providing computer hardware consulting with regard to the hardware maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems {properly in Class 37}, Providing computer software consulting with regard to the software maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems {ok in Class 42}, Providing technical advice relating to operation of computers used in point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems {ok in Class 42}, Consulting services in the field of selection of computer hardware and software systems for others for use in point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems {ok in Class 42}]; Computer anti-virus protection services [must clarify the nature of the services, e.g., Computer anti-virus protection services, namely, providing temporary use of non-downloadable computer anti-virus software]; anti-virus protection and monitoring security systems [must clarify the nature of the anti-virus protection and further clarify the types of security system monitoring which could include services in Class 45, e.g., anti-virus protection services, namely, providing temporary use of non-downloadable computer anti-virus software {ok in Class 42}, Monitoring of computer systems for detecting unauthorized access or data breach {ok in Class 42}, or Monitoring of security alarm systems {properly in Class 45}]; Technical support, namely, monitoring technological functions of computer network systems; computer network configuration services; design and development of computer networks for providing high speed internet access; Design, deployment and management of computer systems and networks for others; Consulting services in the field of design, selection, acquisition, implementation and use of computer hardware and software for others [the wording “acquisition” is indefinite, may amend to: Consulting services in the field of design, selection, implementation and use of computer hardware and software for others]; Computer network and data security services, namely, computer network vulnerability assessments and penetration testing, computer network security review, firewall management, and payment card industry (PCI) hardware compliance assessment and review.; IT technical Support, namely providing consultation with regard to the selection, operation and maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems [this is a virtually identical entry to a previous entry above and could include services in multiple classes, e.g., IT technical support, namely, providing computer hardware consulting with regard to the hardware maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems {properly in Class 37}, Providing computer software consulting with regard to the software maintenance of point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems {ok in Class 42}, IT technical support, namely, consulting services in the field of design, selection, and use of computer hardware and software systems for others for use in point-of-sale (POS) systems, enterprise resource planning (ERP) systems, and customer relationship management (CRM) systems {ok in Class 42}]; Software as a service (SAAS) services featuring software for providing secure segmentation of customer computer environments; and Virtual chief information officer (CIO) services in the nature of providing consulting services in the field of planning, design and management of information technology systems and computer systems
Class 45
Monitoring of security alarm systems
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 REQUIREMENTS
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 1(b):
(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 may be classified in at least four classes; however, applicant submitted a fee(s) sufficient for only two 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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Blake Lovelace/
James Blake Lovelace
Examining Attorney
Law Office 119
(571)-270-1533
james.lovelace@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.