To: | CAMELOT UK BIDCO LIMITED (trademarks@montagulaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88373576 - DERWENT - N/A |
Sent: | 6/12/2019 10:12:10 AM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88373576
Mark: DERWENT
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Correspondence Address: |
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Applicant: CAMELOT UK BIDCO LIMITED
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Reference/Docket No. N/A
Correspondence Email Address: |
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PRIORITY ACTION
NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: 6/12/2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On June 6, 2019, the examining attorney and Paula Upson discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05. Pending response to this priority action, registration is refused for the following reason(s). See TMEP §708.04.
Pending response to this priority action, registration is refused for the following reason(s). See TMEP §708.04.
AMENDMENT TO THE IDENTIFICATION REQUIRED:
Numerous entries in the identification of services are indefinite and must be clarified to specify the nature of the services. In particular, the nature of the services are not clear, could have multiple interpretations, are misclassified, or can span multiple classes. Suggested changes are set out below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Proposed amendments to the identification of services are as follows, with alterations or additions in bold. Applicant may adopt the following wording in the following International Classes, if accurate:
Class 35:
“Providing competitive market intelligence research services.”
Class 36:
“Financial portfolio auditing services in the field of financial patent portfolio management to identify opportunities for monetization of portfolios; Consulting services on the topic of intellectual property monetization.”
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; Consulting in the field of intellectual property licensing management; 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.”
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Furthermore, applicant has provided the application fee(s) for only 3 international classes. Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
MULTIPLE-CLASS ACTION REQUIREMENT:
(1) List the 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(s) already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). 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.
AMENDMENT TO THE MARK DESCRIPTION REQUIRED
The following description is suggested, if accurate: The mark consists of a teal sunburst with lines of staggered length followed by the black word DERWENT. The color white represents background that is not a part of the mark.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action.
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.
Rachel Erdman
/Rachel Erdman/
Examining Attorney
Law Office 104
(571) 272-4717
rachel.erdman@uspto.gov
RESPONSE GUIDANCE