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

 

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:

 

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.

 

Summary of Issues That Applicant Must Address:

(1)  Identification of Goods and Services Requires Amendment

(2)  Intent to Perfect Requirement Advisory

Search Results:

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).

 

Identification of Goods and Services Requires Amendment:

The wording in the identification of goods and services is indefinite and must be clarified because it does not clearly identify the goods and/or services. See TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods and/or the services.  Specifically,

 

CLASS 009

·       Downloadable Computer software featuring software for a cloud based user driven feedback software platform for connecting buyer and seller organizations for facilitating and providing a collaborative digital working online environment;

o   The nature of the goods is unclear. Computer software in Class 9 generally refers to software recorded on computer media or downloadable software, while Software-as-a-Service (SaaS) services, which provide web-based access to software, are in Class 42.

o   The feedback platform needs further specification as to its nature

·       Downloadable Computer software featuring software for a cloud based user driven feedback software platform for virtual communities and networks and the exchange of information and reporting in real time for the tracking and measurement of performance of buyer and seller organizations;

o   The nature of the goods is unclear. Computer software in Class 9 generally refers to software recorded on computer media or downloadable software, while Software-as-a-Service (SaaS) services, which provide web-based access to software, are in Class 42.

o   The feedback platform needs further specification as to its nature

·       Downloadable Computer software featuring software to enable uploading, downloading, accessing, displaying, tagging, blogging, posting, streaming, sharing and otherwise providing electronic media and information via a cloud based user driven computer platform;

o   The nature of the goods is unclear. Computer software in Class 9 generally refers to software recorded on computer media or downloadable software, while Software-as-a-Service (SaaS) services, which provide web-based access to software, are in Class 42.

o   The feedback platform needs further specification as to its nature

·       Downloadable computer software applications for connecting buyer and seller organizations for facilitating and providing a collaborative digital working online environment;

o   The wording “organizations” should be removed for clarity

·       Downloadable computer Application software featuring software for a cloud based user driven feedback platform accessible by mobile telephones and mobile devices for connecting buyer and seller organizations for facilitating and providing a collaborative digital working online environment;

o   The nature of the goods is unclear. Computer software in Class 9 generally refers to software recorded on computer media or downloadable software, while Software-as-a-Service (SaaS) services, which provide web-based access to software, are in Class 42.

o   The feedback platform needs further specification as to its nature

·       Downloadable computer Application software for mobile telephones and mobile devices, namely, software for use in business networking for buyer and seller organizations

o   The nature of the goods is unclear. Computer software in Class 9 generally refers to software recorded on computer media or downloadable software, while Software-as-a-Service (SaaS) services, which provide web-based access to software, are in Class 42.

o   The feedback platform needs further specification as to its nature

 

CLASS 035

·       Consulting services in the field of {indicate field or subject matter of consultation} [nature of subject matter will control the classification of the service]

o   Consultation is providing information. Therefore, it is classified by subject matter and no proper classification can be provided until applicant provides the nature of the subject matter

CLASS 042

·       Software as a service (SAAS) services featuring software for Provision of access to a cloud based user driven feedback platform for connecting buyer and seller organizations for facilitating and providing a collaborative digital working online environment;

o   Provision of access to electronic sites, internet or global computer network is classified in Class 38. However, if applicant offers the services of “Providing temporary use of on-line non-downloadable software” or “Software as a service (SAAS) services featuring software”, applicant may retain the classification as Class 42

·       Software as a service (SAAS) services featuring software for Provision of access to a cloud based user driven feedback platform for virtual communities and networks and the exchange of information and reporting in real time for the tracking and measurement of performance of buyer and seller organizations;

o   Provision of access to electronic sites, internet or global computer network is classified in Class 38. However, if applicant offers the services of “Providing temporary use of on-line non-downloadable software” or “Software as a service (SAAS) services featuring software”, applicant may retain the classification as Class 42

·       Software as a service (SAAS) services featuring software for Provision of access to a cloud based user driven feedback platform to enable uploading, downloading, accessing, displaying, tagging, blogging, posting, streaming, sharing and otherwise providing electronic media and information via a cloud based user driven computer platform;

o   Provision of access to electronic sites, internet or global computer network is classified in Class 38. However, if applicant offers the services of “Providing temporary use of on-line non-downloadable software” or “Software as a service (SAAS) services featuring software”, applicant may retain the classification as Class 42

·       Software as a service (SAAS) services featuring software for Provision of computer software applications for a cloud based user driven feedback platform accessible by mobile telephones and mobile devices for buyer and seller organizations for {specify the function e.g., for connecting buyers and sellers};

o   Provision of access to electronic sites, internet or global computer network is classified in Class 38. However, if applicant offers the services of “Providing temporary use of on-line non-downloadable software” or “Software as a service (SAAS) services featuring software”, applicant may retain the classification as Class 42

o   the USPTO requires application software to indicate the function of the software

·       Hosting a cloud based user driven feedback software platform allowing users to access and work in a collaborative digital working online environment permitting the exchange of information and reporting in real time for the tracking and measurement of the performance of buyers and sellers;

o   The feedback platform needs further specification as to its nature

·       Hosting an interactive cloud based user driven feedback software platform for users to work in a collaborative digital working online environment permitting the exchange of information and reporting in real time for the tracking and measurement of the performance of buyers and sellers;

o   The feedback platform needs further specification as to its nature

o   The wording “organizations” should be removed for clarity

·       Hosting an interactive cloud based user driven feedback software platform to enable uploading, downloading, accessing, displaying, tagging, blogging, posting, streaming, sharing and otherwise providing electronic media and information;

o   The feedback platform needs further specification as to its nature 

·       Providing a web Hosting a platform featuring tracking, reviews and measurement of buyer and seller organization users

o   Hosting of one's own technology is not a service. Further, applicant requires the preceding entry for proper classification.

Accordingly, applicant may adopt the overall recommended identification of goods and services, if accurate (with amended language in bold for convenience):

CLASS 009: Downloadable Computer software featuring software for a cloud based user driven feedback software platform for connecting buyer and seller organizations for facilitating and providing a collaborative digital working online environment; Downloadable Computer software featuring software for a cloud based user driven feedback software platform for virtual communities and networks and the exchange of information and reporting in real time for the tracking and measurement of performance of buyer and seller organizations; Downloadable Computer software featuring software to enable uploading, downloading, accessing, displaying, tagging, blogging, posting, streaming, sharing and otherwise providing electronic media and information via a cloud based user driven computer platform; Downloadable computer software applications for connecting buyer and seller for facilitating and providing a collaborative digital working online environment; Downloadable computer Application software featuring software for a cloud based user driven feedback platform accessible by mobile telephones and mobile devices for connecting buyer and seller organizations for facilitating and providing a collaborative digital working online environment; Downloadable computer Application software for mobile telephones and mobile devices, namely, software for use in business networking for buyer and seller organizations

 

CLASS 035: Consulting services in the field of {indicate field or subject matter of consultation} [nature of subject matter will control the classification of the service]

 

CLASS 042: Software as a service (SAAS) services featuring software for Provision of access to a cloud based user driven feedback platform for connecting buyer and seller organizations for facilitating and providing a collaborative digital working online environment; Software as a service (SAAS) services featuring software for Provision of access to a cloud based user driven feedback platform for virtual communities and networks and the exchange of information and reporting in real time for the tracking and measurement of performance of buyer and seller organizations; Software as a service (SAAS) services featuring software for Provision of access to a cloud based user driven feedback platform to enable uploading, downloading, accessing, displaying, tagging, blogging, posting, streaming, sharing and otherwise providing electronic media and information via a cloud based user driven computer platform; Software as a service (SAAS) services featuring software for Provision of computer software applications for a cloud based user driven feedback platform accessible by mobile telephones and mobile devices for buyer and seller organizations for {specify the function e.g., for connecting buyers and sellers}; Hosting a cloud based user driven feedback software platform allowing users to access and work in a collaborative digital working online environment permitting the exchange of information and reporting in real time for the tracking and measurement of the performance of buyers and sellers; Hosting an interactive cloud based user driven feedback software platform for users to work in a collaborative digital working online environment permitting the exchange of information and reporting in real time for the tracking and measurement of the performance of buyers and sellers; Hosting an interactive cloud based user driven feedback software platform to enable uploading, downloading, accessing, displaying, tagging, blogging, posting, streaming, sharing and otherwise providing electronic media and information; Providing a web Hosting a platform featuring tracking, reviews and measurement of buyer and seller organization users

The suggested language properly specifies and classifies the goods and services and conforms to TMEP §1402.01.

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

Intent to Perfect Requirement Advisory:

 

The application specifies both a use in commerce basis under Trademark Act Section 1(a) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(a), 1126(d); 37 C.F.R. §2.34(a)(1), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(a) basis.  See 15 U.S.C. §§1051(a), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

 

Assistance:

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

/Eliana Torres/

Examining Attorney

Law Office 110

(571) 272-6907

Eliana.Torres@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. 88349940

 

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.