To: | Rackspace US, Inc. (glenn.bacal@bacalgroup.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88307133 - FANATICAL EXPERIENCE - 60293-1076 |
Sent: | 5/2/2019 3:29:14 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88307133
MARK: FANATICAL EXPERIENCE
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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: Rackspace US, 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: 5/2/2019
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 OF SERVICES
The wording “Customer services in the fields of cloud computing, cloud hosting, managed hosting, hosting, server hosting, managed server hosting, computer operating systems, software applications, computer hardware, leasing of computer hardware and software, customization of computer hardware and software, server and device administration, computer storage, computer hardware and software monitoring, reporting, security, deployment and scaling, data management, technology planning, delivery management, and technical support” in the identification of services for International Class 35 must be clarified because “customer services” is too broad under USPTO standards for specificity required. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant must amend this wording to clarify the nature of the customer services. Suggested amended wording appears below.
The wording “Providing troubleshooting assistance to customers in the field of cloud computing, software applications, hosting, websites, databases, and digital content” in the identification of services for International Class 35 is overbroad and misclassified. Troubleshooting in the nature of the repair of computer hardware is classified in International Class 37, while troubleshooting of computer software problems is classified in International Class 42. Applicant must amend this wording to clarify the nature of the services and reclassify them in the appropriate international class. Suggested amended wording appears below.
Applicant may adopt the following identification, if accurate (suggested changes in bold):
International Class 35
Business consulting and information services; Business assistance, management and information services; Business assistance, advisory, management, and consulting services,
namely, helping businesses and organizations solve business problems and make business decisions in the field of cloud computing, cloud hosting, managed hosting, server hosting, managed server
hosting, data security and information technology infrastructure; Business networking in the field of cloud computing and information technology; Arranging and conducting business conferences,
business forums, and exhibitions for commercial or advertising purposes in the field of cloud computing, programmer's documentation, and information technology; Customer
services, namely, responding to customers inquiries for others in the fields of cloud computing, cloud hosting, managed hosting, hosting, server
hosting, managed server hosting, computer operating systems, software applications, computer hardware, leasing of computer hardware and software, customization of computer hardware and software,
server and device administration, computer storage, computer hardware and software monitoring, reporting, security, deployment and scaling, data management, technology planning, delivery management,
and technical support; Providing troubleshooting assistance to customers in the field of cloud computing, software applications, hosting, websites, databases, and digital
content; Providing an online business account administration service for others in the field of hosting and management of computer hardware, computer operating systems, and computer
application infrastructure; Promoting public awareness of the standards and issues in the field of cloud computing; assistance to others in business development and consulting related thereto
International Class 37
Providing troubleshooting assistance to customers in the nature of the repair of computer hardware in the field of cloud computing
International Class 41
Arranging and conducting exhibitions in the field of cloud computing, programmer's documentation, and information technology for non-business and non-commercial purposes
International Class 42
Providing troubleshooting of computer software problems the field of cloud computing, software applications, hosting, websites, databases, and digital content
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 APPLICATION REQUIREMENTS
(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 already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class. 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.
/William D Jackson/
Attorney Advisor - Trademarks
U.S. Patent and Trademark Office
Law Office 117
(571) 272-3064
William.Jackson@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.