To: | Marco Johnson (processing@icaplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88369812 - CLICKIT - JOH1-TMA01 |
Sent: | 6/17/2019 3:40:00 PM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88369812
MARK: CLICKIT
|
|
CORRESPONDENT ADDRESS: INNOVATION CAPITAL LAW GROUP, LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Marco Johnson
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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: 6/17/2019
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 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:
I. AMENDMENT REQUIRED – IDENTIFICATION OF GOODS
Applicant must amend the identification of goods in International Class 9 for the reasons stated below.
Indefinite Wording in Identification
The wording “Downloadable computer software for…permitting a third party to communicate with a driver in a moving vehicle to alert them in relation to their or their passengers’ use or non-use of seat belts” in the identification of goods is indefinite and must be clarified because the software’s function is not clearly described. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “vehicle seat belt tracking devices comprised of computer software, and computer hardware, sensors, transmitters, all for use in connection with real time seat belt tracking and monitoring” in the identification of goods is indefinite and must be clarified because it does not identify the individual components of applicant’s “devices” with sufficient particularity, and because it is unclear if the wording “all for use in connection with real time seat belt tracking and monitoring” applies to each of identified components, or to applicant’s “devices” as a whole. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “vehicle seat belt detection equipment, namely, sensors, hardware and software to detect seat belt usage” in the identification of goods in International Class 9 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 identify the particular type of “sensors” and “hardware”, and because it does not specify that the software is either “recorded” or “downloadable”. Further, this wording could identify goods and services in more than one international class. For example, “recorded software for detecting seatbelt usage” would be classified in International Class 9, while “providing temporary use of online, non-downloadable software for detecting seatbelt usage” would be classified in International Class 42.
The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term or terms. 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).
Suggested Wording for Identification
Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):
“Downloadable computer software for monitoring the use of seat belts in a moving vehicle in real time, for
sending communications to drivers in relation to their use or non-use of seat belts, for sending alerts to third parties in relation to use
or non-use of seat belts in a moving vehicle, and for permitting a third party to communicate with a driver in a moving
vehicle to alert them the driver in relation to their or their passengers' about use or
non-use of seat belts in that vehicle; Vehicle seat belt tracking devices for real time seat belt
tracking and monitoring that comprise comprised of recorded
computer software for {specify function of the software, e.g. “seat belt usage monitoring”}, and computer hardware, {specify type of
sensors, e.g. “electrical”} sensors, and {specify type of sensors, e.g. “radio”} transmitters, all for use in
connection with real time seat belt tracking and monitoring; Vehicle seat belt detection equipment,
namely, {specify type of sensors, e.g. “electrical”} sensors, {specify type of hardware, e.g., “computer”} hardware and recorded software to for detecting seat belt usage; Downloadable mobile applications
that allow for communication between one or more third parties and a vehicle driver to
communicate with each other via, including texts messages, audio communications, and video
communications” in International Class 9.
“Providing temporary use of online, non-downloadable software for detecting seatbelt usage” would be classified in International Class 42.
Applicant will be required to add International Class 42 should it choose to adopt the above suggested wording. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1) et seq., 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Advisories – ID Manual and Scope of Amendments
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.
II. MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes, however applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) 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 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.
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.
/Carl A. Konschak/
Carl A. Konschak, Esq.
Examining Attorney
Law Office 126
(571) 270-3878
carl.konschak@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.