Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUPERSEDING 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:  January 06, 2020

 

 

This Office action supersedes the previous Office action of the same date.  As such, no response is required to the previous Office action.

 

This Office action is in response to applicant’s communication filed on November 25, 2019.  The examining attorney has carefully considered applicant’s arguments and/or amendments in favor of registration.  The refusal based on a likelihood of confusion with the mark in U.S. Registration No. 4853205 is withdrawn.  The foreign registration is acceptable and has been entered into the application record.  As to the remaining issues, the examining attorney has determined the following.

 

IDENTIFICATION OF GOODS AND SERVICES (INT. CLASSES 9 & 42)

 

Applicant must clarify the wording “SOFTWARE” in the identification of goods and/or services in International Class(es) 9 and 42 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

This wording is indefinite because it does not make clear what the specific nature is of the software and its functions.  Further, this wording could identify goods and/or services in more than one international class.  Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

Applicant may substitute the following wording, if accurate (suggested amendments shown in bold type):

 

Computer software, namely, downloadable software and recorded software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and recorded software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Computer software, namely, downloadable software and recorded software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Computer software, namely, downloadable software and recorded software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes, in INT. CLASS 9;

 

Market research; public and market opinion polling; public and market opinion polling services; marketing consultation services, namely, marketing, product and trend forecasting services; market consultation services, namely, market forecasting; economic forecasting; advertising services; marketing services; production and dissemination of advertising matter; business marketing assistance for commercial and industrial companies; business consultancy services; business management and business organization consultancy and assistance; business information; commercial information in the field of business marketing; business research; statistical information and processing; data processing; sales promotion; purchase for others of advertising space; rental of advertising space; purchase for others of publicity and advertising materials; direct mail advertising; organization of exhibitions for commercial, trade, business and/or advertising purposes; radio, television, billboard and press advertising; publicity and sales promotional services; advertising agency services; marketing agency services; media planning and buying, namely, advising the client on the correct times and stations to advertise based on media analysis of the market for that media, preparation and realization of media plans and concepts, and advising client how much media time, and at what times the client should be purchasing advertising; providing promotional sponsorship of sports, cultural and entertainment events; market analysis; accounting; compilation of advertisements for use as web pages on the internet; design services relating to advertising, promotional and marketing activities; information, consultancy and advisory services relating to aforesaid services, in INT. CLASS 35;

 

Software as a service (SaaS), namely, providing software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Software as a service (SaaS), namely, providing software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Software as a service (SaaS), namely, [clarify, e.g., providing, featuring, hosting] software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Software as a service (SaaS), namely, [clarify, e.g., providing, featuring, hosting] software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes; information consultancy and advisory services relating to the aforesaid, in INT. CLASS 42.

 

The amendment to the identification of services for International Class 35 is acceptable and has been entered into the application record.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

TELEPHONE OR E-MAIL RESPONSE SUGGESTED

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

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.  

 

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

 

 

 

 

 

/Alicia Collins Edwards/

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 115

571-272-9147

alicia.edwards@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 January 06, 2020 for

U.S. Trademark Application Serial No. 88341385

 

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. 

 

 

/Alicia Collins Edwards/

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 115

571-272-9147

alicia.edwards@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 January 06, 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.”