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:  March 09, 2020

 

 

This Office action is in response to applicant’s communication filed on February 4, 2020.

 

The applicant has proposed an amendment to the identification of goods in Class 9.  The proposed amendment to the identification of goods is unacceptable.

 

The following requirements are now made FINAL:    See 37 C.F.R. §2.63(b).

 

 

FINAL - IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services remains indefinite and must be clarified because applicant has included both downloadable and non-downloadable software in Class 9.  Applicant was advised in the initial Office action that under Nice 11-2019, computer software in Class 9 must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Therefore, this wording must be clarified to specify whether the software is “downloadable” and/or “recorded” in Class 9, OR, to specify that the applicant is providing the temporary, online non-downloadable use of the software, if applicable, which would be a service in Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant included both downloadable and non-downloadable software in Class 9.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may adopt the following wording, if accurate: 

 

            Class 9

Downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning, in International Class 9.

 

Class 42

Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning, in International Class 42.

 

 

TMEP §1402.01.

 

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.

 

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).

 

Accordingly, the requirement to amend the identification of goods is maintained and made FINAL.

 

 

PROPER RESPONSE TO FINAL REQUIREMENT – Partial Abandonment Advisory

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: the wording “and non-downloadable” for each entry of computer software in Class 9.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and/or services only:  “Downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning” in Class 9 and all of the services in Class 42, namely, “Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers.”

 

 

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@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 March 09, 2020 for

U.S. Trademark Application Serial No. 88312606

 

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. 

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@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 March 09, 2020, 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.”