Offc Action Outgoing

WE KNOW HOSPITALITY

HTW, Inc.

U.S. TRADEMARK APPLICATION NO. 88301273 - WE KNOW HOSPITALITY - 11843-T001US

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

 

 

        

*88301273*

CORRESPONDENT ADDRESS:

       ANDREA J. MEALEY

       FISHERBROYLES LLP

       470 ATLANTIC AVE., 4TH FLOOR

       BOSTON, MA 02210

       

 

CLICK HERE TO RESPOND TO THIS LETTER:

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

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: HTW, Inc.

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

       11843-T001US

CORRESPONDENT E-MAIL ADDRESS: 

       docketing@fisherbroyles.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 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).

 

SUMMARY OF ISSUES:

 

  • Identification and Classification Requirement

 

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

 

In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name.  See TMEP §1402.03(a).

 

Applicant’s goods and/or 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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

 

 

 

 

RESPONSE TEAS PLUS / TEAS RF

 

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.  

 

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. 

 

 

 

 

/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.

 

 

U.S. TRADEMARK APPLICATION NO. 88301273 - WE KNOW HOSPITALITY - 11843-T001US

To: HTW, Inc. (docketing@fisherbroyles.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88301273 - WE KNOW HOSPITALITY - 11843-T001US
Sent: 4/26/2019 7:23:00 PM
Sent As: ECOM119@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. 88301273

 

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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