UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/12/2019

 

 

 

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.

 

Summary of Issues:

 

·       Application Signature Required

·       Identification of Goods and Services Requires Amendment

·       Multiple Class Application Requirements

·       Disclaimer Required

·       Advisory – Copy of Foreign Registration Required

 

 

Search of Office Records

 

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).

 

 

Application Signature Required

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

 

Identification of Goods and Services Requires Amendment

 

The identification for software in International Class 9 is indefinite and must be clarified to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

In addition, software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software.  For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.

 

Moreover, multiple entries in the identification of goods and services are indefinite and must be clarified because the nature and/or type of the services is unknown.  For instance, multiple entries in the goods, such as “visual displays” and “mobile internet equipment and apparatus” are vague and do not precisely indicate the items bearing the mark.  Likewise, multiple entries in the services, such as “voice and data transmission services” and “communications services” are broad and could cover a number of different types of services.  The examining attorney provides further details about the specific types of revisions needed in the proposed amendments below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods/services.  See TMEP §1402.01.  If the goods/services have no common commercial or generic name, applicant must describe or explain the nature of the services (or in the case of goods, describe the product, its main purpose, and its intended uses), using clear and succinct language.  See id.

 

The wording “making available information in electronic form, and telecommunication of information, to third parties to allow tracking and location of third party assets, cargos and personnel” in the class 38 identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass business information services in class 35 or website technology services in class 42 (see proposed amendments in these classes).

 

Moreover, “managing communication networks for others” in class 39 appears to be misclassified; managing wireless communication networks is a class 42 service. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.

 

The following amendments are suggested, if accurate (added language in bold; deleted language struck; requests for further information in bold and italicized): 

 

Class 9:           downloadable computer software for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; downloadable computer software platforms for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; downloadable cloud computing software for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; cloud servers; downloadable cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems, namely, {specify common commercial name of goods, e.g., telecommunications transmitters}; data processing apparatus and instruments; downloadable computer software for the collection and analysis of data; radio apparatus; marine radios; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units in the nature of {specify common commercial name, e.g., flexible flat panel displays for computers}, antennae, mobile internet equipment and apparatus in the nature of {specify common commercial name, e.g., wireless internet devices which provide telematics services and have a cellular phone function}, modems, {specify type of routers, e.g., network} routers, advanced satellite modems and downloadable computer software for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; satellite tracking and positioning systems for maritime use, namely, {specify common commercial name, e.g., GPS navigation devices}; downloadable computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus, namely, {specify common commercial name, e.g., oxygen breathing units}; hazard alert systems for maritime use; distress alert systems for maritime use comprising {specify components, e.g., hardware and downloadable software for notifying or identifying users of users’ surrounding conditions}; emergency transmitters for emitting distress signal; parts and fittings for all the aforesaid goods

 

Class 35:        providing electronic tracking and location information of third party assets, cargos, and personnel to third parties for business administration purposes

 

Class 38:         {specify type of communications services, e.g., wireless broadband, long distance telephone} communications services; satellite communications services; {specify common commercial name of digital transmission services, e.g., transmission of digital files} digital and satellite transmission services; data transfer services, namely, {provide common commercial name, e.g., transfer of data by telecommunications, providing frame relay connectivity services for data transfer}; electronic mail services, namely, {provide common commercial name, e.g., transmission of electronic mail}; telecommunications services, namely, {provide common commercial name, e.g., telecommunication access services}; voice and data transmission services, namely, {provide common commercial name, e.g., electronic, electric, and digital transmission of voice and data}; telex and facsimile services, namely, {provide common commercial name, e.g., facsimile communication and retrieval services}; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications {specify transmission medium, e.g., through electronic communications networks, via digital communications networks}; secure e-mail services, namely, {provide common commercial name, e.g., providing electronic transmission of secure email}; secure transmission of data, sound or images {specify transmission medium, e.g., through electronic communications networks, via digital communications networks}; provision of wireless application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; making available information in electronic form, and  telecommunication of information, {specify common commercial name of telecommunication services, e.g., transmission of information on optical telecommunication networks} to third parties to allow tracking and location of third party assets, cargos and personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet, namely, {provide common commercial name, e.g., providing voice communication services via the internet}; {specify type of broadcasting, e.g., television and radio, internet} broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail services in the nature of {provide common commercial name, e.g., transmission of electronic mail}, voice and data transmission services in the nature of {provide common commercial name, e.g., electronic, electric, and digital transmission of voice and data}, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, {specify type of communication services, e.g., satellite, wireless broadband} communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, {specify common commercial names of telecommunication services, e.g., transmission of information on optical telecommunication networks} to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet applications and broadcasts, namely, {provide common commercial name, e.g., broadcast transmission by satellite}; leasing and sub-leasing bandwidth and uplink services; managing communication networks for others; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and databases; consultancy, information and advisory services relating to the aforesaid

 

Class 39:         Orbit transfer services in relation to satellites, namely, {provide common commercial name, e.g., launch and placement in prescribed orbit of satellites of others}; {clarify nature of services, e.g., GPS navigation services}, namely,tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; {clarify nature of services, e.g., GPS navigation services}, namely,provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; {clarify nature of services, e.g., GPS navigation services}, namely,provision of tracking and positioning services and systems; {clarify nature of services, e.g., GPS navigation services}, namely,tracking and locating objects and equipment by means of satellite technology for third parties; information, advisory and consultancy services relating to the aforesaid

 

Class 42:        providing a website featuring technology that enables telecommunication of electronic tracking and location information of third party assets, cargos, and personnel to third parties; managing wireless computer networks for others

 

 

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 amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

 

Multiple Class Application Requirements

 

The application identifies goods and services that are classified in at least 5 classes; however, applicant submitted a fee sufficient for only 3 classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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 Sections 1(b) and 44:

 

(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 services that are classified in at least 5 classes; however, applicant submitted a fee 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

 

Disclaimer Required

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “CREW” because it is not inherently distinctive.  This unregistrable term is at best merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached dictionary evidence shows this wording means “all personnel operating or serving aboard a ship.”  Accordingly, the term merely describes a feature of applicant’s goods and services, namely, telecommunications and/or electronic goods and services used to communicate with personnel operating or serving aboard a ship.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “CREW” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

Advisory – Copy of Foreign Registration Required

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

Response Guidelines

 

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. 

 

 

 

Dinisha Fernando Nitkin

/dfn/

Examining Attorney

Law Office 110

(571) 272-0212

dinisha.nitkin@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/12/2019 FOR U.S. APPLICATION SERIAL NO. 88340662

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/12/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.