To: | Oracle International Corporation (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88339821 - ORACLE - 1131083 |
Sent: | 5/30/2019 7:31:17 PM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88339821
MARK: ORACLE
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CORRESPONDENT ADDRESS: KILPATRICK TOWNSEND & STOCKTON LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Oracle International Corporation
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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: 5/30/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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
IDENTIFICATION OF SERVICES
The wording “computer services, namely, providing on-line non-downloadable computer software platforms for developing, building, and operating distributed applications”, “software as a service (SAAS) software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using blockchain technology” and “software as a service (SAAS) services, namely, providing machine learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systems” in the identification of services is indefinite and must be clarified because the nature of the services are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate (suggested wording in bold, suggested deletions in strikethroughs):
Class 42 platform as a service (PAAS) featuring computer software
platforms for multi-chain, multi-cloud network management that deploys nodes and connects them to blockchains, and that enables users to manage blockchain applications; providing on-line
non-downloadable computer software for enabling users to electronically create, exchange, store, send, receive, accept, and transmit digital tokens based on the blockchain technology; computer
services, namely, providing on-line non-downloadable computer software platforms for developing, building, and operating distributed applications; software as a service (SAAS) services featuring software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using
blockchain technology; platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information
and codes; design, development and implementation of audit and security computer software for blockchain-based platforms; electronic data storage, namely, providing a blockchain technology-based,
distributed database ledger for the storage of public, private or encrypted data, transactions and information; developing and updating of computer software for use in managing blockchain data;
application service provider (ASP) featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software
applications; application service provider (ASP), namely, hosting computer application software for the purpose of developing, testing, and integrating blockchain applications and software; software
as a service (SAAS) featuring software for developing, deploying, updating, and monitoring the performance of machine learning, deep learning, data science, predictive analytics, automation, and
artificial intelligence applications; platform as a service (PAAS) featuring computer software platforms for building, hosting, and deploying chatbots and digital assistants; software as a service
(SAAS) services featuring software for building, hosting, and deploying chatbots and digital assistants; application service provider (ASP) featuring application programming interface (API) software
for building, hosting, and deploying chatbots and digital assistants; Consulting services in the field of software as a service (SAAS) services, namely, providing machine
learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systems
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.
Response guidelines. For this application to proceed, applicant must explicitly address the requirement in this Office action. 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.
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 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.
/Joanna Han/
Joanna Han
Trademark Examining Attorney
Law Office 126
(571) 270-3617
joanna.han@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.