Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 08, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 10, 2019.

 

In a previous Office action(s) dated June 10, 2019, the applicant was required to satisfy the following requirement(s):  An amendment to the identification was required and an amendment to the mark description was required. 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: An acceptable amendment to the mark description was provided.    See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Amendment to the Identification Required

 

AMENDMENT TO THE IDENTIFICATION REQUIRED

 

Applicant has classified “Intellectual Property licensing management” in International Class 35; however, the proper classification is International Class 45.  Therefore, applicant may respond by (1) reclassifying these goods and/or services in the proper international class, (2) deleting “Intellectual Property licensing management” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.

 

Further, the identification of services is indefinite and must be clarified because research services in class 35 must be specified as falling within class 35, such as marketing research services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Class 35:

Providing competitive market intelligence research services; patent portfolio business auditing and analysis services to identify opportunities for monetization of portfolio; business consulting services on the topic of monetization of Intellectual Property

 

Class 41 is acceptable as amended.

 

Class 42 is acceptable as amended.

 

Class 45: Patent legal research; legal consulting services on the topic of patents; Consulting services in the nature of legal support services for intellectual property licensing, prosecution strategy, and enforcement; Administrative legal and paralegal support services in the nature of patent docketing, patent application drafting and prosecution, and administrative legal and paralegal support services related to patent litigation; Legal information services, namely, providing patent legal information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights; Intellectual Property licensing management

 

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.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not timely respond to this Office action, the following entries will be deleted from International Class 35 in the application:  “Providing competitive intelligence research services; Intellectual Property licensing management.”  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following services only:

 

Class 35:

“Patent portfolio business auditing and analysis services to identify opportunities for monetization of portfolio; business consulting services on the topic of monetization of Intellectual Property.”

 

Class 41:

Translation services related to patent application and prosecution documents

 

Class 42:

Providing access to an interactive computer database in the field of scientific and scientific patent information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights; Scientific information services, namely, providing scientific patent information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights

 

Class 45:

Patent legal research; legal consulting services on the topic of patents; Consulting services in the nature of legal support services for intellectual property licensing, prosecution strategy, and enforcement; Administrative legal and paralegal support services in the nature of patent docketing, patent application drafting and prosecution, and administrative legal and paralegal support services related to patent litigation; Legal information services, namely, providing patent legal information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights

 

 See TMEP §718.02(a). 

 

 

 

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.  

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Erdman, Rachel

/Rachel Erdman/

Examining Attorney

Law Office 104

(571) 272-4717

rachel.erdman@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 08, 2020 for

U.S. Trademark Application Serial No. 88373576

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Erdman, Rachel

/Rachel Erdman/

Examining Attorney

Law Office 104

(571) 272-4717

rachel.erdman@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 08, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”