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:  May 08, 2020

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on October 26, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new advisory:  the proposed amendment to identification of services is unacceptable.  See TMEP §§706, 711.02. 

 

In a previous Office action dated October 26, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1, 2, 3, and 45 for the mark failing to function as a service mark, and Sections 1 and 45 for failure to show a direct association between the mark and services.

 

The Sections 1, 2, 3, and 45 refusal and Sections 1 and 45 refusal are maintained and continued.

 

 

The following is a SUMMARY OF ISSUES that applicant must address:

• NEW ISSUE: Unacceptable Amendment to the Identification of Services Advisory
• Sections 1, 2, 3, and 45 Refusal – Failure to Function
• Sections 1 and 45 Refusal – No Direct Association With Identified Services

 

 

Applicant must respond to all issues raised in this Office action and the previous Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

UNACCEPTABLE AMENDMENT TO THE IDENTIFICATION OF SERVICES ADVISORY

 

Particular wording in the proposed amendment to the identification of services in Class 042 is not acceptable because it exceeds the scope of the original identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptable amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the identification in the application as previously amended remains operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

 

In this case, the application as previously amended identified the services as follows:

 

“Integration of computer systems and networks; Design and development of computer networks”

 

However, the proposed amendment identifies the following services:

 

“Integration of computer systems and networks; Design and development of computer networks, Services featuring software for cybersecurity services” {emphasis added}

 

 

This portion of the proposed amendment is beyond the scope of the original identification because the original identification does not encompass the added services relating to software for cybersecurity.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

 

MAINTAINED & CONTINUED ISSUES

 

The Sections 1, 2, 3, and 45 refusal and Sections 1 and 45 refusal as detailed in the October 26, 2019 Office action are maintained and continued.

 

 

ASSISTANCE

 

Please 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 refusals and/or requirements 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. 

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

 

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

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 May 08, 2020 for

U.S. Trademark Application Serial No. 88340333

 

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. 

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 May 08, 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.”