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: 6/5/2019

 

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.

 

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).

 

SUMMARY OF ISSUES:

• Requirement – Amend Identification and/or Classification of Goods and Services

 

 

 

 

REQUIREMENT – AMEND IDENTIFICATION AND/OR CLASSIFICATION OF GOODS AND SERVICES

 

For the reasons set forth below, specific wording in the identification of goods and services is unacceptable as indefinite and must be clarified.

 

International Class 9

 

The wording “computer software for…” is indefinite and must be clarified because the nature of the software goods remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Thus, applicant must amend the identification to specify whether the goods are downloadable or recorded.

 

Additionally, the wording “including” is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  Specifically, applicant’s use of “including” renders the exact function of the software unclear.  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

International Class 35

 

Applicant has classified the following services in International Class 35:  “technical consulting in the fields of mining and mining automation; Implementation of robotics and remote operations in the field of mining.”  However, the proper classification is either International Class 37 or 42 depending upon the nature of the mining services as discussed in detail below.

 

Applicant may respond by (1) amending this language per the guidance provided below and reclassifying the services accordingly; or (2) deleting these services from the application.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

The wording “technical consulting in the fields of mining and mining automation” 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.  The fields of use “mining and mining automation” are broad enough to include mining extraction consultation services classified in International Class 37 and mining exploration consultation services classified in International Class 42.  Thus, applicant must amend the identification to further clarify the fields of use for the services.

 

The wording “implementation of robotics and remote operations in the field of mining” must be clarified because it is indefinite and too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, this wording is indefinite because the nature of the services remains unclear.  Additionally, the fields of use “mining and mining automation” are broad enough to include mining extraction-related services classified in International Class 37 and mining exploration-related services classified in International Class 42.  Thus, applicant must amend the identification to further clarify the nature of the services.

 

International Class 37

 

The wording “providing information in the field of mining…mining automation, operations and technological advancements and innovations” 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 mining extraction information services classified in International Class 37 and mining exploration information services classified in International Class 42.  Thus, applicant must amend the identification to further clarify the fields of use for the information services.

 

Additionally, the wording “including” is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

International Class 42

 

The wording “platform as a service featuring computer software platforms in the fields of mining and mining automation including real time analysis and control of assets and operations” is indefinite and must be clarified because it fails to make clear the specific function of the software programs.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, as previously noted, the term “including” is an open-ended term that fails to identify specific fields of use.  Thus, applicant must amend the identification to clarify the function of the software programs provided via the platform as a service services and either delete or replace the wording “including” with a definite term, such as “namely”. 

 

The wording “hosting a digital platform in the fields of mining and mining automation” is indefinite and must be clarified because the type of services and/or their nature remains   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, the wording fails to make clear that applicant provides a service for others.  Thus, applicant must amend the identification to further clarify the type and/or nature of the services and incorporate language that indicates that applicant provides a service for others. 

 

Applicant may adopt the following wording, specified in bold, if accurate:

 

International Class 9:  Downloadable computer software for mining and mining automation processes, namely, downloadable software for the integration of advanced analytics with autonomous mine equipment;

 

International Class 37: Technical consulting in the fields of mining extraction and mining extraction automation; Mining extraction of [specify, e.g. uranium, copper, etc.] provided via robotics; providing information in the field of mining extraction, namely, information concerning mining extraction automation, operations, and technological advancements and innovations over a global computer network;     

 

International Class 42: Research and development in the fields of mining and mining automation; platform as a service featuring computer software platforms for [specify the function of the programs, e.g., real time analysis and control of assets and mining logistical operations, use in database management, word processing, etc.] in the fields of mining and mining automation; [incorporate language that clarifies the type, nature of the services and indicates that applicant provides services for others, e.g., application service provider, namely, hosting a digital platform comprised of applications, software and web sites of others] in the fields of mining and mining automation; mining exploration services in the field of [specify e.g. uranium, copper, etc.] provided via robotics; providing information in the field of mining exploration, namely, information concerning mining exploration automation, operations and technological advancements and innovations over a global computer network.

 

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).

 

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.

 

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.  

 

ASSISTANCE

 

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. 

 

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571)272-8468

Rhoda.Nkojo@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 6/5/2019 FOR U.S. APPLICATION SERIAL NO. 88344058

 

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 6/5/2019 (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.