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:  October 23, 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.  

 

 

 

Introduction

 

This Office action is supplemental to the previous Office action issued on April 12, 2019 in connection with this application, and takes into account the amendments made in applicant’s response of September 24, 2019.  The assigned trademark examining attorney inadvertently omitted an identification requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the identification of services in International Class 38 contains the names of registered third party marks, which must be removed.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Based on applicant’s latest communication, the following requirements have been satisfied:

  

• Application Signature Required
• Disclaimer Required
• Copy of Foreign Registration Required

 

See TMEP §713.02.

 

The Identification amendment requirements set out in the examining attorney’s Office action of April 12, 2019 still requires clarification with respect to International Class 30.  Therefore, this requirement is maintained and continued, and proposed amendments have been incorporated with the new identification requirements under the section entitled “Identification of Goods/Services Requires Amendment”

 

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

 

Summary of Issues:

 

·         NEW & MAINTAINED/CONTINUED:  Identification of Goods/Services Requires Amendment (Partial Requirement)

·         MAINTAINED/CONTINUED: Multiple Class Application Requirements

·         Partial Abandonment Advisory

 

 

NEW & MAINTAINED/CONTINUED: Identification of Goods/Services (Partial Requirement)

 

NEW REQUIREMENT IN IC 38:

 

The wording “Telex” and “Uplink” in the identification of services are registered marks not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the services.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration Nos. 0901195, 0902922, 3279435, and 4683816. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

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

 

Class 38:         Communications services, namely, electronic data transmission; satellite communications services; digital and satellite transmission of voice, data, images, signals and messages; data transfer by telecommunications; electronic mail transmission and retrieval services; telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; electronic, electric, and digital voice and data transmission services; telex {provide common commercial name of device} and facsimile transmission and retrieval services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications via electronic, electric, and digital communications networks; secure e-mail transmission and retrieval services; secure transmission of data, sound or images via electronic, electric, and digital communication networks; provision of wireless application protocol services including those utilizing a secure communications channel; radio satellite ship to shore telecommunication services; transmission of information via electronic, electric, and digital 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, providing voice, data, graphics, images, audio and video communication and broadcasting services via the internet; wireless 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 transmission and retrieval services, voice and data transmission services, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, satellite 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 {provide common commercial name of services} uplink services; transmission of information via electronic, electric, and digital 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, management of access to broadcast and communication channels; leasing and sub-leasing bandwidth and {provide common commercial name of services} uplink services; 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

 

 

MAINTAINED/CONTINUED IN IC 39:

 

Applicant has amended its services to indicate that it offers tracking and locating services in International Class 39, however, the tracking and locating services for commercial purposes belong in International Class 35. 

 

Additionally, applicant has provided the application fees for only 3 international classes.  Thus, not all international classes in the application are covered by the application fees.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in the previous Office action.

 

Moreover, the wording “provision of maritime tracking and positioning services and systems” and “provision of tracking and positioning services and systems” is indefinite and must be clarified because it is vague and does not indicate the nature of the services being offered.  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 services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Additionally, “Provision of tracking and locating services and systems, namely, tracking and locating objects and equipment by means of satellite technology for third parties” must be further specified to indicate that the services are being provided for commercial purposes (rather than for other purposes that would fall in other classes, such as lost/stolen property recovery purposes in international Class 45).

 

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

 

Class 35:         tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties for commercial purposes and making available this information in electronic form; provision of maritime tracking and positioning services and systems, namely, {provide common commercial name of services, e.g., providing an online computer database for the reporting and tracking of boat moves and location for business purposes}; provision of tracking and positioning services and systems namely, {provide common commercial name of services, e.g., tracking and monitoring of vehicles for commercial purposes}; Provision of tracking and locating services and systems, namely, tracking and locating objects and equipment by means of satellite technology for third parties for commercial purposes; information, advisory and consultancy services relating to the aforesaid

 

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

 

 

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).

 

MAINTAINED/CONTINUED: Multiple Class Application Requirements

 

If applicant chooses to adopt more classes based on the proposed identification amendments, additional fees as discussed in the original Office action will apply.

 

 

Response Guidelines

 

Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following services in will be deleted from the application: 

 

Class 38:         telex transmission and retrieval services; maritime telephone communications services and maritime satellite telecommunications services, namely, leasing and sub-leasing uplink services; leasing and sub-leasing uplink services

 

Class 39:         provision of tracking and locating services and systems, namely, tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; Provision of tracking and positioning services and systems, namely, provision of maritime tracking and positioning services and systems; provision of tracking and positioning services and systems; Provision of tracking and locating services and systems, namely, tracking and locating objects and equipment by means of satellite technology for third parties

 

The application will then proceed with the following services only: 

 

Class 9:           Downloadable computer software for the operation and management of satellite communication systems; downloadable computer software platforms for the operation and management of satellite communication systems; downloadable cloud computing software for the operation and management of satellite communication systems; cloud servers; downloadable cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems, namely, satellite dishes, satellite antennae, satellite terminals, namely, parabolic dishes, transmitters, receivers, modems, flat antennae, satellite processors, gateway routers, satellite telephones and personal digital assistants, for satellite transmission; 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 computer monitors, antennae, mobile internet equipment and apparatus in the nature of satellite telephones and personal digital assistants, modems, gateway routers, advanced satellite modems and downloadable computer software for simulation and analysis of satellite communication systems and for operating satellites and satellite systems; satellite tracking and positioning systems for maritime use, namely, systems for tracking the position of satellite communication terminals belonging to end-user customers, namely, satellite communication terminals located on marine vessels, third party maritime assets, cargoes and personnel and GPS-based navigation systems for marine vessels; downloadable computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus, namely, apparatus for use in broadcasting navigational information, search-and-rescue information, distress alerts, and messages; hazard alert systems for maritime use; distress alert systems for maritime use comprising computers, computer hardware, computer software, and computer peripheries for broadcasting navigational information, search-and-rescue information, distress alerts, and messages; emergency transmitters for emitting distress signals; parts and fittings for all the aforesaid goods

 

Class 38:         Communications services, namely, electronic data transmission; satellite communications services; digital and satellite transmission of voice, data, images, signals and messages; data transfer by telecommunications; electronic mail transmission and retrieval services; telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; electronic, electric, and digital voice and data transmission services; facsimile transmission and retrieval services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications via electronic, electric, and digital communications networks; secure e-mail transmission and retrieval services; secure transmission of data, sound or images via electronic, electric, and digital communication networks; provision of wireless application protocol services including those utilizing a secure communications channel; radio satellite ship to shore telecommunication services; transmission of information via electronic, electric, and digital 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, providing voice, data, graphics, images, audio and video communication and broadcasting services via the internet; wireless 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 transmission and retrieval services, voice and data transmission services, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, satellite 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; transmission of information via electronic, electric, and digital 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, management of access to broadcast and communication channels; leasing and sub-leasing bandwidth; 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, launch and placement in prescribed orbit of satellites of others; GPS navigation services; rental of GPS equipment for navigational purposes; information, advisory and consultancy services relating to the aforesaid

 

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

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

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 Nitkin

/dn/

Examining Attorney

Law Office 110

(571) 272-0212

dinisha.nitkin@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 October 23, 2019 for

U.S. Trademark Application Serial No. 88340662

 

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. 

 

 

Dinisha Nitkin

/dn/

Examining Attorney

Law Office 110

(571) 272-0212

dinisha.nitkin@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 October 23, 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.”