Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 13, 2019

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action  

 

This application was approved for publication on May 15, 2019.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

Identification Unacceptable-Indefinite Wording-Class 9

The wording “Computer software for use in administering, creating, developing, implementing, managing, tracking, reporting and measuring promotional strategies related to mobile advertising campaigns, device-specific advertising campaigns and location-specific advertising campaigns” in the identification of goods is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must clarify the format of the “Computer software for use in administering, creating, developing, implementing, managing, tracking, reporting and measuring promotional strategies related to mobile advertising campaigns, device-specific advertising campaigns and location-specific advertising campaigns” in Class 9.  Under the most recent amendments to the Nice Agreement, computer software in Class 9 must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Therefore, applicant must specify if the software is downloadable and/or recorded in Class 9 or if the applicant is providing their temporary, online non-downloadable use which would be a service in Class 42.  If applicant adopts the latter suggested amendment of the identification of services, then applicant must amend the classification to International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401. 

 

For example, the wording “Computer software for use in administering, creating, developing, implementing, managing, tracking, reporting and measuring promotional strategies related to mobile advertising campaigns, device-specific advertising campaigns and location-specific advertising campaigns” is acceptable in Class 9.

 

The wording “internet connected products, namely, …wearable digital electronic devices, namely, watches… comprising primarily of software for viewing, sending and receiving texts, emails, data and information related to mobile advertising campaigns, device specific advertising campaigns and location specific advertising campaigns” in the identification of goods is indefinite and must be amended to further specify the common commercial name or type of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  This wording is also unacceptable in Class 9 under Nice 10-2016 because it identifies wearable digital electronic devices consisting of Class 14 wristwatches as their predominant component, and the predominant component generally controls classification of goods comprised of multiple components that, if sold separately, would be classified in different classes. See, for example, TMEP §1401.05(a) and TMEP §1401.05(c).   Although applicant states “comprising primarily of software for viewing, sending and receiving texts, emails, data and information related to mobile advertising campaigns, device specific advertising campaigns and location specific advertising campaigns”, it is clear that the goods are predominantly watches with software. 

 

For example, the wording “smart watches featuring software for viewing, sending and receiving texts, emails, data and information related to mobile advertising campaigns, device specific advertising campaigns and location specific advertising campaigns” is acceptable in Class 9; the wording “wrist watches featuring software for viewing, sending and receiving texts, emails, data and information related to mobile advertising campaigns, device specific advertising campaigns and location specific advertising campaigns” is acceptable in Class 14.

 

The wording “internet connected products, namely, non luminous personal location positioning indication beacons and wearable digital electronic devices, namely, eyeglasses comprising primarily of software for viewing, sending and receiving texts, emails, data and information related to mobile advertising campaigns, device specific advertising campaigns and location specific advertising campaigns” is acceptable in Class 9. 

Identification Unacceptable-Indefinite Wording-Class 35

The wording “Mobile advertising services provided to advertising companies, brand managers and branded companies, namely, (a) delivering advertisements for others to mobile devices, tablets and handheld gaming devices, and distribution of advertisements for others through mobile content channels; (b) collection and analysis of mobile advertising metrics for others, and providing advertising metrics reports to others; promoting the goods and services of others via mobile devices, namely display of websites, delivery of digital files, sending of emails, highlighting of locations, launching of videos, distribution of information, redirection to social networking websites, virtual tours, scheduling events, contests and promotional offers, coupons and rebates utilizing (a) Near Field Communication (NFC) technology; (b) short range wireless interconnection of cellular phones and computers technology; (c) Quick Response Code (QR code) technology; (d) Data Matrix technology” in the identification of services is not acceptable because it contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses, letters and also the separating semi-colons from the identification and incorporate any parenthetical information into the description of the services.  In addition, the wording “delivering advertisements” in the identification of services in Class 35 is indefinite as this could include transmission and/or delivery services in different classes.  Applicant must amend this wording to clarify the common commercial name or type of services. For example, the wording “Mobile advertising services provided to advertising companies, brand managers and branded companies, namely, providing advertisements for others to mobile devices, tablets and handheld gaming devices, and distribution of advertisements for others through mobile content channels, collection and analysis of mobile advertising metrics for others, and providing advertising metrics reports to others; promoting the goods and services of others via mobile devices, namely display of websites, delivery of digital files, sending of emails, highlighting of locations, launching of videos, distribution of information, redirection to social networking websites, virtual tours, scheduling events, contests and promotional offers, coupons and rebates utilizing Near Field Communication (NFC) technology, short range wireless interconnection of cellular phones and computers technology, Quick Response Code (QR code) technology and Data Matrix technology” is acceptable in Class 35.

 

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.

 

Additional 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 are classified in at least three 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.

 

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. 

 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

email: dominic.ferraiuolo@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 August 13, 2019 for

U.S. Trademark Application Serial No. 88324038

 

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. 

 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

email: dominic.ferraiuolo@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 August 13, 2019, 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.”