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: 5/30/2019

 

 

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:

• Identification of Services

 

IDENTIFICATION OF SERVICES

 

The wording “Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software for enabling users to electronically analyze smart contracts and detect security issues; Providing a website featuring non-downloadable software for enabling users to electronically analyze smart contracts and detect security issues; Providing a website featuring non-downloadable software for enabling users to electronically analyze smart contracts and detect security issues; Providing online non-downloadable software for enabling users to electronically analyze smart contracts and detect security issues” in the identification of services is indefinite and must be clarified because it is unclear as to what type of security issues are detected.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must further specify the type of security issues detected, e.g., “computer security issues”, “data security issues”, or “building security issues”.

 

The wording “Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software for use as an application programming interface (API); Providing a website featuring non-downloadable software for use as an application programming interface (API); Providing a website featuring non-downloadable software for use as an application programming interface (API); Providing online non-downloadable software for use as an application programming interface (API)” in the identification of services is indefinite and must be clarified because it is unclear as to what the function of the API software is.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must further specify the function of the API software, e.g., “for integration of video content into websites”.

 

The wording “Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software libraries, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology; Providing a website featuring non-downloadable software, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology; Providing a website featuring non-downloadable software, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology; Providing online non-downloadable software, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology” in the identification of services is indefinite and must be clarified because it is unclear as to what the function of the software tools is.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must further specify the function of the software tools, e.g., “for processing financial transactions”.

 

The wording “Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software and tools for accessing and using data stored in a network; Providing a website featuring non-downloadable software and tools for accessing and using data stored in a network; Providing a website featuring non-downloadable software and tools for accessing and using data stored in a network; Providing online non-downloadable software and tools for accessing and using data stored in a network” in the identification of services is indefinite and must be clarified because it is unclear as to what the function of the software is, as all software accesses and uses data.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must further specify the function of the software and that the tools are software tools, e.g., “non-downloadable software and software tools for detecting data security issues”.

 

Furthermore, applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 42 for “Providing a website featuring non-downloadable software for enabling users to electronically analyze smart contracts and detect security issues”, “Providing a website featuring non-downloadable software for use as an application programming interface (API)”, “Providing a website featuring non-downloadable software, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology”, and “Providing a website featuring non-downloadable software and tools for accessing and using data stored in a network”.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, if accurate. Suggested additions and changes are in bold underline, deleted items in strikethrough, and items the applicant must clarify are in italics: 

 

Class 42:         Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software for enabling users to electronically analyze smart contracts and detect {specify the type of security, e.g., “computer”, “data”, “building”} security issues; Providing a website featuring non-downloadable software for enabling users to electronically analyze smart contracts and detect {specify the type of security, e.g., “computer”, “data”, “building”} security issues; Providing a website featuring non-downloadable software for enabling users to electronically analyze smart contracts and detect security issues; Providing online non-downloadable software for enabling users to electronically analyze smart contracts and detect {specify the type of security, e.g., “computer”, “data”, “building”} security issues; Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software for use as an application programming interface (API) for {specify the function of the API software, e.g., “integration of video content into websites”}; Providing a website featuring non-downloadable software for use as an application programming interface (API); Providing a website featuring non-downloadable software for use as an application programming interface (API); Providing online non-downloadable software for use as an application programming interface (API) for {specify the function of the API software, e.g., “integration of video content into websites”}; Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software libraries, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology for {specify the function of the software tools, e.g., “for processing financial transactions”, “for use in database management”, “for use as a spreadsheet”}; Providing a website featuring non-downloadable software, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology for {specify the function of the software tools, e.g., “for processing financial transactions”, “for use in database management”, “for use as a spreadsheet”}; Providing a website featuring non-downloadable software, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology; Providing online non-downloadable software, namely, non-downloadable electronic data files consisting of software tools for use with blockchain technology for {specify the function of the software tools, e.g., “for processing financial transactions”, “for use in database management”, “for use as a spreadsheet”}; Software as a service (SAAS) services, platform as a service (PAAS) services, and cloud computing services, all of the foregoing featuring software and software tools for accessing and using data stored in a network in the nature of {further specify the function of the access and use of the data, e.g., “non-downloadable software and software tools for performing data analysis”, “non-downloadable software and software tools for detecting data security issues”}; Providing a website featuring non-downloadable software and software tools for accessing and using data stored in a network in the nature of {further specify the function of the access and use of the data, e.g., “non-downloadable software and software tools for performing data analysis”, “non-downloadable software and software tools for detecting data security issues”}; Providing a website featuring non-downloadable software and tools for accessing and using data stored in a network; Providing online non-downloadable software and software tools for accessing and using data stored in a network in the nature of {further specify the function of the access and use of the data, e.g., “non-downloadable software and software tools for performing data analysis”, “non-downloadable software and software tools for detecting data security issues”}

 

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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

 

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 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.  

 

 

 

/Derek van den Abeelen/

Examining Attorney

Law Office 126

(571) 270-3997

derek.vandenabeelen@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 5/30/2019 FOR U.S. APPLICATION SERIAL NO. 88346453

 

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 5/30/2019 (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.