To: | Flexera Software LLC (trademarks-ch@btlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88329757 - X - 55040-292109 |
Sent: | 5/22/2019 10:20:58 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88329757
MARK: X
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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: Flexera Software LLC
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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: 5/22/2019
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.
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).
However, please note the following issues:
IDENTIFICATION OF GOODS/SERVICES
The identification of goods/services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses.
Please note that suggestions that will make the identification of goods/services definite have been provided below in bold and the reasoning for these suggestions have been provided in brackets.
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 may substitute the following wording, if accurate:
Downloadable Computer software which monitors, reports, validates, and optimizes license usage {specify the software is downloadable to ensure it is properly classified since non-downloadable software belongs in Class 42}; Downloadable software for monitoring and maintenance of the security and integrity of computer systems, local area networks, intranets, global computer networks and the Internet; Downloadable software for delivering, alerting, reporting, and managing the workflow of software security advisories; Downloadable computer software which determines the compatibility between software and firmware and other software and firmware; Downloadable computer software which determines the optimal runtime environment for software and firmware; Downloadable computer software which discovers, assesses, and consolidates software and firmware to facilitate the migration of that software and firmware to a different runtime environment; Downloadable computer software which enforces continual software license compliance by controlling software deployment; Downloadable computer software for identifying, monitoring, validating, and optimizing IT assets; Downloadable computer software for monitoring, reporting and optimizing cloud services; Downloadable computer software for creating and maintaining scalable cloud computing applications; Downloadable electronic publications in the nature of guides featuring information about computer software, computer hardware, and information technology equipment, namely, appliances, tools, instruments, and machines {describe the common commercial name of the goods and specify that they are downloadable} in Class 09
Providing electronic information reference catalog services in the nature of an electronic guide featuring computer software, computer hardware, and information technology
equipment, namely, appliances, tools, instruments, and machines; business data analysis services regarding the use of IT technology {describe the subject matter of
the analysis services using more concise wording} for identifying, reporting, monitoring, validating, and optimizing, information technology assets, namely, computer software, computer
hardware, and information technology equipment, such as, appliances, tools, instruments, and machines; business consulting services in Class 35
Providing maintenance of computer hardware in Class 37
Software as a service (SaaS) services, namely, software for monitoring and maintenance of the security and integrity of computer systems, local area networks, intranets, global
computer networks and the internet; software as a Service (SaaS) services, namely, software for delivering, alerting, reporting, and managing the workflow of software security advisories; software as
a service (SaaS) services, namely, computer software for discovering, assessing, and consolidating software and firmware to facilitate the migration of that software and firmware to different runtime
environments; software as a Service (SaaS) services featuring software for use by others for monitoring, reporting, validating, and optimizing license usage {specify that the services feature
the use of software}; Software as a service (SaaS) services featuring software for creating and maintaining scalable cloud computing applications; Software as a service (SaaS) services
featuring software for monitoring, reporting and optimizing cloud services; Software as a service (SAAS) services featuring software for identifying, reporting, monitoring, validating,
and optimizing information technology assets, namely, computer software, computer hardware, and information technology equipment, such as, appliances, tools, instruments, and machines information
technology, and business intelligence, cloud services and big data analytics; technical support services, namely, maintenance and troubleshooting related to computer software and
hardware problems {maintaining computer hardware belongs in Class 37 and must either be deleted or placed in the appropriate class} in Class 42
MULTI CLASS ADVISORY
(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 4 classes; however, applicant submitted a fee(s) sufficient for only 3 classes. 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.
/Ahsen Khan/
Trademark Attorney
United States Patent & Trademark Office
Law Office 113
ahsen.khan@uspto.gov
571 272 4343
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.