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: 6/4/2019

 

The referenced application has been reviewed by the assigned Trademark Examining Attorney.  Applicant must respond timely and completely to the issues 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 USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of Applicant’s mark.

 

SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:

 

• Advisory – Prior-Filed Pending Application
• Amended Identification of Goods Required
• Clarification of Number of Classes Required – Multiple Class Application Requirements

 

ADVISORY – PRIOR-FILED PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88156795 precedes Applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, Applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of Applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, Applicant may present arguments in support of registration by addressing the issue of the potential conflict between Applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits Applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

Applicant's identification of "software" in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods or 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 "downloadable software" in Class 9 or "non-downloadable software" in Class 42. Applicant may refer to the suggested amended wording below.

 

Additional portions of the wording in identification of goods is indefinite and must be clarified because the function of the software programs is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may refer to the suggested amended wording below.

 

Overall Identification

 

Applicant may adopt the following form of identification, if accurate:

 

Class 9 – Network security appliance comprised of computer hardware and artificial intelligence-based software for identifying, analyzing, visualizing, tracking, and collecting information on network security incidents and network traffic, and providing customized cyber security, governance, risk and compliance response options; network security appliance comprised of computer hardware and software featuring dashboard software for searching, mapping and graphing network devices and security threats, producing security incident reports, monitoring, tracking and managing computer and network security and providing trend visualization and analytics regarding computer and network security threats; downloadable, artificial-intelligence based network security software that detects and prioritizes mal-intent and behavioral threats from internal and external sources and performs autonomous incident triage; downloadable computer software for use in protecting and managing enterprise security; downloadable computer software for digital security; downloadable computer software and downloadable software platform, all for monitoring enterprise networks and computer systems to protect against malicious attacks; downloadable computer software for monitoring data and communications for security purposes; downloadable computer software for protecting private information on enterprise networks; downloadable computer software for implementing computer, software and network security measures; downloadable computer software for monitoring and detecting security breaches; downloadable computer software that provides intrusion alert, threat protection and other security functions; downloadable anti-malware software applications; downloadable computer software for providing network, Internet, and computer security; downloadable computer software for scanning, detecting, remediating and removing viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats and other malware; downloadable Internet security software, including namely, computer software for use in the monitoring and control of computer and online activity; downloadable computer software for identifying and preventing malicious attacks on, and unauthorized activities and intrusions in computers, computer systems, networks, hardware, software applications, digital devices, and mobile devices; downloadable computer software for providing secure networks; downloadable computer software for security analytics; downloadable computer software for network traffic analysis; downloadable computer software for network detection and response; downloadable computer software for threat investigations and incident response; downloadable computer software for threat hunting

 

Class 42 – Providing temporary use of non-downloadable, artificial-intelligence based network security software that detects and prioritizes mal-intent and behavioral threats from internal and external sources and performs autonomous incident triage; providing temporary use of non-downloadable computer software for use in protecting and managing enterprise security; providing temporary use of non-downloadable computer software for digital security; providing temporary use of non-downloadable computer software and non-downloadable software platform, all for monitoring enterprise networks and computer systems to protect against malicious attacks; providing temporary use of non-downloadable computer software for monitoring data and communications for security purposes; providing temporary use of non-downloadable computer software for protecting private information on enterprise networks; providing temporary use of non-downloadable computer software for implementing computer, software and network security measures; providing temporary use of non-downloadable computer software for monitoring and detecting security breaches; providing temporary use of non-downloadable computer software that provides intrusion alert, threat protection and other security functions; providing temporary use of non-downloadable anti-malware software applications; providing temporary use of non-downloadable computer software for providing network, Internet, and computer security; providing temporary use of non-downloadable computer software for scanning, detecting, remediating and removing viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats and other malware; providing temporary use of non-downloadable Internet security software, including namely, computer software for use in the monitoring and control of computer and online activity; providing temporary use of non-downloadable computer software for identifying and preventing malicious attacks on, and unauthorized activities and intrusions in computers, computer systems, networks, hardware, software applications, digital devices, and mobile devices; providing temporary use of non-downloadable computer software for providing secure networks; providing temporary use of non-downloadable computer software for security analytics; providing temporary use of non-downloadable computer software for network traffic analysis; providing temporary use of non-downloadable computer software for network detection and response; providing temporary use of non-downloadable computer software for threat investigations and incident response; providing temporary use of non-downloadable computer software for threat hunting

 

Note: If Applicant adds one or more classes to the application, then Applicant must comply with the Multiple Class Application Requirements set forth in this Office action.

 

Scope Advisory

 

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

 

ID Manual Online

 

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.

 

CLARIFICATION OF NUMBER OF CLASSES REQUIRED –

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application references services based on use in commerce in more than one international class; therefore, Applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least two classes; however, Applicant submitted a fee sufficient for only one class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fee or (b) restrict the application to the number of classes covered by the fee already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class 9.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

For this application to proceed, Applicant must explicitly address each requirement in this Office action.  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.

 

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 requirements 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 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.  

 

/Samantha Sherman/

Examining Attorney

Law Office 123

(571) 270-0903

Samantha.Sherman@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 6/4/2019 FOR U.S. APPLICATION SERIAL NO. 88349524

 

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 6/4/2019 (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.