UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

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: 5/1/2019

 

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 Goods and Services

 

The identification of goods and services is indefinite and must be clarified. As outlined below, the identification must be made to conform to USPTO requirements.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:

 

Class 09: Recorded Computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for providing enhanced connectivity between individuals by determining the availability and activity of individuals or groups of individuals at different communication mediums, namely, voice, SMS, e-mail, social media and/or instant messaging; Recorded computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for tracking, auditing and/or providing reports on communication usage and activity, namely, voice, SMS, e-mail, social media and/or instant messaging; Recorded computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for implementing communication controls based on an individual's location, relationship, calendar schedule, voice usage, SMS usage, e-mail usage, social media usage and/or instant messaging usage; Recorded computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for tracking an individual's location, availability, schedule, voice usage, data usage and/or SMS usage to provide for enhanced connectivity between users; Recorded computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for providing information, auditing and/or reporting about an individual's location, availability, activity, schedule, voice usage, data usage and/or SMS usage; Recorded computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for tracking an individual's location, availability, activity, schedule, voice usage, data usage, SMS usage to audit and/or score an individual's effectiveness in communicating with others; Recorded computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for directing communications between individuals based on an individual's location, communication history, communication activity, communication patterns, and communication preferences or controls; Recorded computer software and downloadable computer software for mobile devices, phones, desktop computers, portable computers, laptop computers, tablet computers, hand held computing devices, namely, software for monitoring, auditing, reporting on and/or comparing expenditures of one company, group or individual to one or more companies, groups or individuals, namely, monitoring, auditing reporting and/or comparing resource usage, performance and/or expense; <downloadable/recorded>application software for mobile devices, phones, desktops, portable and laptop computers, handheld computers, namely, software for use database management and the electronic storage of data; Recorded<or downloadable> computer software in the field of voice and data services, namely, software for managing, tracking, auditing, planning and procuring fixed, mobile and convergent telecommunications system for use by organizations, enterprises and consumers; Recorded <or downloadable> computer application software for mobile phones and desktop, portable and laptop computers, namely, software for viewing, monitoring, scanning and tracking user account activity for facilitating telecommunications cost controls, administrator controls, usage management, locking and wiping devices, location tracking with geo-fencing alerts, motor vehicle speed alerts, blacklist/whitelist phone calling controls, content monitoring, messaging, notification lists, emergency alerts, in addition to other monitoring, analysis, alerting and control features 

 

Class 35:  Business consulting services <indefinite. Applicant may use “in the field of”>in the nature of cloud services, SAAS, PAAS and IAAS; business consulting services in the field of IT assets; business consulting services in the field of internet of things (IOT services) and data enabled remote devices; business consulting services in the nature of monitoring, auditing, reporting and/or comparing usage, performance, expense, licenses and subscriptions associated with hosted services and software, cloud services and software, internet of things (IOT) devices and services, hosted infrastructure and platforms, SAAS, PAAS and IAAS business consulting and marketing services, namely, managing, tracking, auditing and planning an organization's fixed, mobile and converged telecommunications systems, telecommunications infrastructure, telecommunications usage and telecommunications assets; outsourcing services in the nature of arranging procurement of goods for others, namely, the purchase of voice and data telecommunication services and devices for others; services for cost analysis for voice and data telecommunication services including management of an enterprise's communications expenses, assets and services, including planning and sourcing, procurement and provisioning, inventory and usage management, invoice processing, expense management, allocation and accounting, and asset decommissioning and disposal; business consulting services in the nature of helping businesses manage the use of computers, mobile devices, phones, desktop computers, portable computers, hand held computing devices, namely, providing enhanced connectivity between individuals by determining the availability and activity of individuals or groups of individuals at different communication mediums, namely, voice, SMS, email, social media and/or instant messaging; business consulting services in the nature of helping businesses monitor the use of computers, mobile devices, phones, desktop computers, portable computers, hand held computing devices namely, by tracking, auditing and/or providing reports on communication usage and activity, namely, voice, SMS, e-mail, social media and/or instant messaging; business consulting services in the nature of helping businesses manage the use of computers, mobile devices, phones, desktop computers, portable computers, hand held computing devices, namely, implementing communication controls based on an individual's location, relationship, calendar schedule, voice usage, SMS usage, e-mail usage, social media usage and/or instant messaging usage; business consulting services in the nature of helping businesses monitor the use of computers, mobile devices, phones, desktop computers, portable computers, hand held computing devices namely, by tracking an individual's location, availability, schedule, voice usage, data usage and/or SMS usage to provide for enhanced connectivity between users; business consulting services in the nature of helping businesses provide information, audits and/or reports about an individual's location, availability, activity, schedule, voice usage, data usage and/or SMS usage based on an individual's use of computers, mobile devices, phones, desktop computers, portable computers, hand held computing devices; business consulting services in the nature of helping businesses monitor the use of computers, mobile devices, phones, desktop computers, portable computers, hand held computing devices namely, by tracking an individual's location, availability, activity, schedule, voice usage, data usage, SMS usage to audit and/or score an individual's effectiveness in communicating with others; business consulting services in the nature of helping businesses direct communications between individuals based on an individual's location, communication history, communication activity, communication patterns, and communication preferences or controls; business consulting services in the nature of helping businesses monitor the use of computers, mobile devices, phones, desktop computers, portable computers, hand held computing devices, namely, by monitoring, auditing, reporting on and/or comparing expenditures of one company, group or individual to one or more companies, groups or individuals, namely, monitoring, auditing reporting and/or comparing resource usage, performance and/or expense; business consulting services in the nature of helping businesses manage use of hosted and cloud services, namely, monitoring, auditing, reporting and/or comparing usage, performance and expense associated with hosted and cloud services; inventory management in the field of wireless communication devices; online inventory management services, namely, tracking, managing, and monitoring inventory of wireless communication devices on behalf of others; procurement services, namely, purchasing wireless telecommunications plans and devices for others; administration, billing and reconciliation of wireless mobile telephone accounts on behalf of others; ordering and inventory monitoring for wireless telecommunication devices; providing business management and consulting services to telecommunications customers to select and manage their wireless mobile telephone services, including information regarding wireless telecommunications devices and accessories, mobile applications, mobile device security, wireless communications plans, and carrier options; order fulfillment services; billing services and preparing invoices; industrial asset management services, namely, liquidating and remarketing the industrial assets of others; wireless life cycle management services, namely, management tools and solutions in the nature of an internet website featuring better business management information for enterprises within their wireless programs; inventory management 

 

Class 37:  Maintenance of wireless telephone and wireless communication devices

 

Class 38: Communication services, namely, providing telecommunication connectivity services with enhanced connectivity between individuals by determining the availability and activity of individuals or groups of individuals at different communication mediums, namely, voice, SMS, e-mail, social media and/or instant messaging for transfer of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks; communication services, namely, providing telecommunication connectivity services with communication controls based on an individual's location, relationship, calendar schedule, voice usage, SMS usage, e-mail usage, social media usage and/or instant messaging usage for controlling the transfer of voice, audio, visual images and data by telecommunication networks, wireless communication networks, the internet, info services networks and data networks; communication services, namely, providing telecommunication connectivity services for transfer of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks based on an individual's location, communication history, communication activity, communication patterns, and communication preferences or controls; communication services, namely, providing telecommunication connectivity services for transfer of voice, audio, visual images and data by telecommunication networks, wireless communication networks, the internet, info services networks and data networks   

 

Class 42:  Services for providing temporary use of online non-downloadable software to consumers of mobile devices which allow users to remotely view, monitor, scan and track user account activity for facilitating telecommunications cost controls, and administrator controls, including providing capabilities such as bill shock prevention, usage management, locking and wiping devices, location tracking with geo-fencing alerts, blacklist/whitelist phone calling controls, content monitoring, device usage policy enforcement based on usage, location, time of day and other administrator-defined restrictions, messaging, notification lists, emergency alerts and location tracking, in addition to other monitoring, analysis, alerting and control features; services for providing temporary use of online non-downloadable software, namely, software for providing enhanced connectivity between individuals by determining the availability and activity of individuals or groups of individuals at different communication mediums, namely, voice, SMS, e-mail, social media and/or instant messaging; providing temporary use of online non-downloadable software, namely, software for tracking, auditing and/or providing reports on communication usage and activity, namely, voice, SMS, e-mail, social media and/or instant messaging; providing temporary use of online non-downloadable software, namely, software for implementing communication controls based on an individual's location, relationship, calendar schedule, voice usage, SMS usage, e-mail usage, social media usage and/or instant messaging usage; providing temporary use of online non-downloadable software, namely, software for tracking an individual's location, availability, schedule, voice usage, data usage and/or SMS usage to provide for enhanced connectivity between users; providing temporary use of online non-downloadable software, namely, software for providing information, auditing and/or reporting about an individual's location, availability, activity, schedule, voice usage, data usage and/or SMS usage; providing temporary use of online non-downloadable software, namely, software for tracking an individual's location, availability, activity, schedule, voice usage, data usage, SMS usage to audit and/or score an individual's effectiveness in communicating with others; providing temporary use of online non-downloadable software, namely, software for directing communications between individuals based on an individual's location, communication history, communication activity, communication patterns, and communication preferences or controls; providing temporary use of online non-downloadable software, namely, software for monitoring, auditing, reporting on and/or comparing expenditures of one company, group or individual to one or more companies, groups or individuals, namely, monitoring, auditing reporting and/or comparing resource usage, performance and/or expense; providing temporary use of online non-downloadable software, namely, software for monitoring, auditing, reporting and/or comparing usage, performance and expense associated with hosted and cloud services; providing temporary use of online non-downloadable software, namely, software for monitoring, auditing, reporting and/or comparing usage, performance, expense, licenses and subscriptions associated with hosted services and software, cloud services and software, hosted infrastructure and platforms, internet of things (IOT) devices and services, SAAS, PAAS and IAAS; software as a service (SAAS), namely, software for use in managing and monitoring wireless communication device inventory, managing employee and company wireless communications plans, procuring wireless communications plans and devices, account billing and invoice processing, monitoring and obtaining reports regarding mobile device usage and inventory, obtaining information regarding wireless devices and related accessories, and obtaining information regarding wireless plans and carrier options; computer technology support services, namely, help desk services in the field of wireless telecommunications devices; specialized wireless device services, namely, pre-loading customer phone books, loading company specific information and literature on devices, and testing of wireless devices with wireless carriers; software as a service (SAAS) featuring robotic process automation software for automating the sales process, allowing access to an interactive web browser chat, automating transactions between carriers, managing automated communications, and automating billing to consumers in the field of wireless mobile communications; computer technology support services, namely, help desk services; specialized wireless device services, namely, pre-loading customer phone books, loading company specific information and literature on devices, and testing of wireless devices with wireless carriers; computer software development services <duplicate>; providing on-line non-downloadable computer software programs for use in preparing split billing and invoice applications; reporting and optimization tools in the nature of on-line non-downloadable computer software for preparing business reports; on-line non-downloadable computer software that provides web-based access to applications and services through a custom portal interface for managing wireless phones and wireless data connectivity devices in the nature of smart phones and laptop computers 

 

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).

 

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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

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.  

 

If the applicant has any questions or needs assistance regarding this action, please telephone the assigned examining attorney.

 

 

/FrankLattuca/

Frank Lattuca

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 109

(571) 270-1518

Frank.Lattuca@u

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/1/2019 FOR U.S. APPLICATION SERIAL NO. 88307273

 

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 5/1/2019 (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.