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: 6/26/2019

 

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:

• Refusal: Section 2(d) Likelihood of Confusion
• Advisory: Prior-Filed Application
• Advisory: Claim of Ownership of Registration and Conflicting Application
• Requirement: Identification of Goods
• Advisory: Multiple-Class Application Requirements

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark 88374137 is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5510413.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

Applicant’s mark consists a design of stylized Morse code symbols for the letters “T-R-U-S-T” in design form.

 

Registrant’s mark is “VERIMATRIX DRIVING TRUST,” with a design consisting of stylized Morse code symbols for the letters “T-R-U-S-T”.

 

In the present case, the applicant’s mark is identical in part to the registered mark in sound, appearance, and overall commercial impression. Specifically, applicant’s mark and the registered mark share an identical design component, namely, a stylized design of the Morse code symbols for “TRUST”. 

 

When comparing designs, similarity of the marks is determined primarily on the basis of visual similarity.  See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007); TMEP §1207.01(c).  However, a side-by-side comparison is not the test.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973).  When comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).

 

Applicant’s mark contains the additional wording “VERMATRIX DRIVING TRUST,” but this does not diminish the similarities between the marks.  Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Therefore, the applicant’s mark is identical in part to the registered mark in sound, appearance, and overall commercial impression. Accordingly, the marks are considered to be confusingly similar.

 

Comparison of the Goods/Services

 

The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant’s identified goods/services are: “software for the protection of transactions, exchange of computer data, and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects; software for encryption and decryption of computer data; software for encrypting and embedding electronic digital signatures to create and authenticate electronic digital certificates; software for encoding, decoding, packaging and encrypting digital video, audio and audiovisual content; software for automating a process for authentication and identification of digital audio and video media for security purposes; software for monitoring, managing, securing and controlling encryption and distribution of digital video, audio and audiovisual content; software for providing content management, authentication, identification, management, and analytics in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software for controlling, deploying, monitoring, maintaining and managing watermarking processing, content encryption keys, content distribution rules, and content playback policies in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software for contractual rights management and royalty reporting; software for authenticating user identity and authorizing and securing access to remote computers, websites, and software as a service applications; software for token-based authentication of user identity for authorizing and securing access to remote computers, websites, and software as a service applications; software for providing content management, authentication, identification, management, and analytics for networked devices in the Internet of things; software for connecting, operating, and managing networked devices connected to cloud-based software in the Internet of things (IoT); software for the creation and maintenance of secure Internet of things (IoT) ecosystems, namely, software for managing a certificate authority for networked devices and applications, managing identifiers and encryption key material; software for authentication and secure bootstrap, provisioning and updating of devices and software in the Internet of things (IoT); software for device certificate management and secure device to cloud communication; software for device certificate management and secure device to cloud communication based on a PKI hierarchy; software for monitoring devices for viruses and other malware threats and controlling device access to software and services; software for end-to-end encryption of data from devices, to Internet of things (IoT) applications, and to cloud storage services; information processing equipment, namely, computers, microprocessors, encryption and decryption circuits; and computer hardware” in International Class 9; “communication services using computer, telecommunication and data transmission networks, namely, communications by computer terminals; services for supplying telecommunication networks, namely, providing third party users with access to telecommunication infrastructure; data traceability services, namely, co-location services for voice, video and data communications applications; providing information regarding electronic data transmission and telecommunication; consulting services in the field of electronic data transmission and telecommunication; and rental of telecommunications equipment in the nature of message and data transmission apparatus” in International Class 38; and “software as a service (SaaS) services featuring software for encryption and decryption of computer data; software as a service (SaaS) services featuring software for encrypting and embedding electronic digital signatures to create and authenticate electronic digital certificates; software as a service (SaaS) services featuring software for encoding, decoding, packaging and encrypting digital video, audio and audiovisual content; software as a service (SaaS) services featuring software for automating a process for authentication and identification of digital audio and video media for security purposes; software as a service (SaaS) services featuring software for monitoring, managing, securing and controlling encryption and distribution of digital video, audio and audiovisual content; software as a service (SaaS) services featuring software for providing content management, authentication, identification, management, and analytics in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software as a service (SaaS) services featuring software for controlling, deploying, monitoring, maintaining and managing watermarking processing, content encryption keys, content distribution rules, and content playback policies in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software as a service (SaaS) services featuring software for contractual rights management and royalty reporting; software as a service (SaaS) services featuring software for authenticating user identity and authorizing and securing access to remote computers, websites, and software as a service applications; software as a service (SaaS) services featuring software for token-based authentication of user identity for authorizing and securing access to remote computers, websites, and software as a service applications; software as a service (SaaS) services featuring software for providing content management, authentication, identification, management, and analytics for networked devices in the Internet of things (IoT); software as a service (SaaS) services featuring software for connecting, operating, and managing networked devices connected to cloud-based software in the Internet of things (IoT); software as a service (SaaS) services featuring software for the creation and maintenance of secure Internet of things (IoT) ecosystems, namely, software for managing a certificate authority for networked devices and applications, managing identifiers and encryption key material; software as a service (SaaS) services featuring software for authentication and secure bootstrap, provisioning and updating of devices and software in the Internet of things (IoT); software as a service (SaaS) services featuring software for device certificate management and secure device to cloud communication; software as a service (SaaS) services featuring software for device certificate management and secure device to cloud communication based on a PKI hierarchy; software as a service (SaaS) services featuring software for monitoring devices for viruses and other malware threats and controlling device access to software and services; software as a service (SaaS) services featuring software for end-to-end encryption of data from devices, to Internet of things (IoT) applications, and to cloud storage services; engineering services; computer hardware design and development services; computer software design and development services; design and development of computer hardware and software solutions for the security of mobile apparatus, connected objects and apparatus; design and development of computer hardware and software solutions for the protection of transactions, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects; development of programs for computers and microprocessors; microprocessor programming services; computer programming services; design, development and technical study of computer systems; design, development and technical study of data exchange systems; design and development of programs for data encryption and decryption; computer system analysis; technical assistance being troubleshooting of computer and software security problems in the field of data communication; remote monitoring services for computer systems to ensure proper and secure functioning; design, development, customization and updating of computer software and programs; research and development of new products for others; computer software consulting services; computer consulting services; information technology (IT) services; information, consultancy and consulting services in the field of telecommunications and communications security; and information, consultancy and consulting services in the field of computer security, namely, transaction security, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects” in Class 42.

 

Registrant’s identified goods/services are: “Information processing equipment, namely, computers, microprocessors, encryption and decryption circuits; computer software for encryption and decryption of computer data; computer hardware; computer software for the protection of transactions, exchange of computer data, and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects” in Class 9; “Retail store services, wholesale store services, mail order and online retail store services via a website, all featuring programs for computers and microprocessors, computer software, programs for encryption and decryption of computer data, encryption and decryption circuits for computer data, computer interfaces for communication, computer hardware and software solutions for the security of mobile apparatus, connected objects and apparatus, computer hardware and software solutions for the protection of transactions, exchanges of computer data and data contained in electronic apparatus, in particular mobile apparatus, connected apparatus and connected objects” in Class 35; and “Engineering services; computer hardware design and development services; computer software design and development services; design and development of computer hardware and software solutions for the security of mobile apparatus, connected objects and apparatus; design and development of computer hardware and software solutions for the protection of transactions, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects; development of programs for computers and microprocessors; microprocessor programming services; computer programming services; design, development and technical study of computer systems; design, development and technical study of data exchange systems; design and development of programs for data encryption and decryption; computer system analysis; technical assistance being troubleshooting of computer and software security problems in the field of data communication; remote monitoring services for computer systems to ensure proper and secure functioning; design, development, customization and updating of computer software and programs; research and development of new products for others; computer software consulting services; computer consulting services; information technology (IT) services; information, consultancy and consulting services in the field of telecommunications and communications security; information, consultancy and consulting services in the field of computer security, namely, transaction security, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects” in Class 42.

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).

 

In this case, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

 

Applicant’s goods and services and registrant’s goods and services are identical in part, namely, “Information processing equipment, namely, computers, microprocessors, encryption and decryption circuits;” “software for encryption and decryption of computer data;” “computer hardware;” “software for the protection of transactions, exchange of computer data, and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects” in Class 9, and “Engineering services; computer hardware design and development services; computer software design and development services; design and development of computer hardware and software solutions for the security of mobile apparatus, connected objects and apparatus; design and development of computer hardware and software solutions for the protection of transactions, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects; development of programs for computers and microprocessors; microprocessor programming services; computer programming services; design, development and technical study of computer systems; design, development and technical study of data exchange systems; design and development of programs for data encryption and decryption; computer system analysis; technical assistance being troubleshooting of computer and software security problems in the field of data communication; remote monitoring services for computer systems to ensure proper and secure functioning; design, development, customization and updating of computer software and programs; research and development of new products for others; computer software consulting services; computer consulting services; information technology (IT) services; information, consultancy and consulting services in the field of telecommunications and communications security; information, consultancy and consulting services in the field of computer security, namely, transaction security, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects” in Class 42.

 

Additionally, the registration uses broad wording to describe “Information processing equipment, namely, computers, microprocessors, encryption and decryption circuits; computer software for encryption and decryption of computer data; computer hardware; computer software for the protection of transactions, exchange of computer data, and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects” in Class 9 which presumably encompasses all goods of the type described, including applicant’s more narrow “software for encrypting and embedding electronic digital signatures to create and authenticate electronic digital certificates; software for encoding, decoding, packaging and encrypting digital video, audio and audiovisual content; software for automating a process for authentication and identification of digital audio and video media for security purposes; software for monitoring, managing, securing and controlling encryption and distribution of digital video, audio and audiovisual content; software for providing content management, authentication, identification, management, and analytics in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software for controlling, deploying, monitoring, maintaining and managing watermarking processing, content encryption keys, content distribution rules, and content playback policies in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software for contractual rights management and royalty reporting; software for authenticating user identity and authorizing and securing access to remote computers, websites, and software as a service applications; software for token-based authentication of user identity for authorizing and securing access to remote computers, websites, and software as a service applications; software for providing content management, authentication, identification, management, and analytics for networked devices in the Internet of things; software for connecting, operating, and managing networked devices connected to cloud-based software in the Internet of things (IoT); software for the creation and maintenance of secure Internet of things (IoT) ecosystems, namely, software for managing a certificate authority for networked devices and applications, managing identifiers and encryption key material; software for authentication and secure bootstrap, provisioning and updating of devices and software in the Internet of things (IoT); software for device certificate management and secure device to cloud communication; software for device certificate management and secure device to cloud communication based on a PKI hierarchy; software for monitoring devices for viruses and other malware threats and controlling device access to software and services; software for end-to-end encryption of data from devices, to Internet of things (IoT) applications, and to cloud storage services;” in Class 9.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods and/or services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the attached Internet evidence consisting of third party websites shows that entities that provide and sell encryption software also provide and sell telecommunications services under the same mark.

 

See attached evidence:

 

• http://www.ibm.com/security/data-security
• http://www.ibm.com/us-en/marketplace/cloud-data-encryption

 

• http://www.cyphre.com/telecom-industry/
• http://www.cyphre.com/cyphrelink/

 

• http://www.cellcrypt.com/

 

• http://www.mttgroup.ch/

 

The evidence establishes that provides the relevant goods and/or services and markets the goods and/or services under the same mark, and that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Because the marks are highly similar and the goods and/or services are closely related, a likelihood of confusion exists and registration is refused.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

PRIOR-FILED APPLICATION (ADVISORY)

 

The filing date of pending U.S. Application Serial No. 88334609 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.

 

CLAIM OF OWNERSHIP OF REGISTRATIONS/CONFLICTING APPLICATION (ADVISORY)

 

If the mark in the cited registration and/or conflicting prior-filed application is owned by applicant, applicant may provide evidence of ownership of the mark(s) by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)       Submit copies of documents evidencing the chain of title.

 

(3)       For Reg. No. 5510413, applicant may submit the following statement(s), verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 5510413.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

(4)       For Serial No. 88334609, applicant may submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of Application Serial No(s). 88334609.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that  “Applicant is the owner of Application Serial No. 88334609,” inserting the relevant application serial number; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services must be clarified because it is indefinite or otherwise unacceptable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification for software in International Class 9 is indefinite and must be clarified to specify whether it is downloadable or prerecorded, or online, nondownloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  Software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software.  For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.

 

Additionally, the entries “encryption and decryption circuits” in Class 9, and  “microprocessor programming services,” “design, development and technical study of data exchange systems,” “information technology (IT) services,” and “information, consultancy and consulting services in the field of telecommunications and communications security” in Class 42 are indefinite and must be clarified because the nature of the goods or services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Finally, the wording “technical assistance being troubleshooting of computer and software security problems in the field of data communication” in the identification of services for International Class 42 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, troubleshooting of includes both diagnosis and repair of problems.  Diagnosis and repair of software are both Class 42 activities; however, repair of computer hardware problems is in 37 and repair of computer software problems is in Class 42.

 

Applicant may substitute the following wording, if accurate (suggestions in bold; comments in bold italics):

 

International Class 9: “downloadable software for the protection of transactions, exchange of computer data, and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects; downloadable software for encryption and decryption of computer data; downloadable software for encrypting and embedding electronic digital signatures to create and authenticate electronic digital certificates; downloadable software for encoding, decoding, packaging and encrypting digital video, audio and audiovisual content; downloadable software for automating a process for authentication and identification of digital audio and video media for security purposes; downloadable software for monitoring, managing, securing and controlling encryption and distribution of digital video, audio and audiovisual content; downloadable software for providing content management, authentication, identification, management, and analytics in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software for controlling, deploying, monitoring, maintaining and managing watermarking processing, content encryption keys, content distribution rules, and content playback policies in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software for contractual rights management and royalty reporting; downloadable software for authenticating user identity and authorizing and securing access to remote computers, websites, and software as a service applications; downloadable software for token-based authentication of user identity for authorizing and securing access to remote computers, websites, and software as a service applications; downloadable software for providing content management, authentication, identification, management, and analytics for networked devices in the Internet of things; downloadable software for connecting, operating, and managing networked devices connected to cloud-based software in the Internet of things (IoT); downloadable software for the creation and maintenance of secure Internet of things (IoT) ecosystems, namely, software for managing a certificate authority for networked devices and applications, managing identifiers and encryption key material; downloadable software for authentication and secure bootstrap, provisioning and updating of devices and software in the Internet of things (IoT); downloadable software for device certificate management and secure device to cloud communication; downloadable software for device certificate management and secure device to cloud communication based on a PKI hierarchy; downloadable software for monitoring devices for viruses and other malware threats and controlling device access to software and services; downloadable software for end-to-end encryption of data from devices, to Internet of things (IoT) applications, and to cloud storage services; information processing equipment, namely, computers, microprocessors, electronic encryption and decryption circuits; and computer hardware”

 

International Class 37: “technical assistance being troubleshooting of computer security problems in the field of data communication, namely, troubleshooting in the nature of the repair of computer hardware”

 

International Class 38: No changes.

 

International Class 42: “software as a service (SaaS) services featuring software for encryption and decryption of computer data; software as a service (SaaS) services featuring software for encrypting and embedding electronic digital signatures to create and authenticate electronic digital certificates; software as a service (SaaS) services featuring software for encoding, decoding, packaging and encrypting digital video, audio and audiovisual content; software as a service (SaaS) services featuring software for automating a process for authentication and identification of digital audio and video media for security purposes; software as a service (SaaS) services featuring software for monitoring, managing, securing and controlling encryption and distribution of digital video, audio and audiovisual content; software as a service (SaaS) services featuring software for providing content management, authentication, identification, management, and analytics in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software as a service (SaaS) services featuring software for controlling, deploying, monitoring, maintaining and managing watermarking processing, content encryption keys, content distribution rules, and content playback policies in the field of delivery of audio and video via download, streaming, on demand delivery, cable, broadcast, and satellite; software as a service (SaaS) services featuring software for contractual rights management and royalty reporting; software as a service (SaaS) services featuring software for authenticating user identity and authorizing and securing access to remote computers, websites, and software as a service applications; software as a service (SaaS) services featuring software for token-based authentication of user identity for authorizing and securing access to remote computers, websites, and software as a service applications; software as a service (SaaS) services featuring software for providing content management, authentication, identification, management, and analytics for networked devices in the Internet of things (IoT); software as a service (SaaS) services featuring software for connecting, operating, and managing networked devices connected to cloud-based software in the Internet of things (IoT); software as a service (SaaS) services featuring software for the creation and maintenance of secure Internet of things (IoT) ecosystems, namely, software for managing a certificate authority for networked devices and applications, managing identifiers and encryption key material; software as a service (SaaS) services featuring software for authentication and secure bootstrap, provisioning and updating of devices and software in the Internet of things (IoT); software as a service (SaaS) services featuring software for device certificate management and secure device to cloud communication; software as a service (SaaS) services featuring software for device certificate management and secure device to cloud communication based on a PKI hierarchy; software as a service (SaaS) services featuring software for monitoring devices for viruses and other malware threats and controlling device access to software and services; software as a service (SaaS) services featuring software for end-to-end encryption of data from devices, to Internet of things (IoT) applications, and to cloud storage services; engineering services; computer hardware design and development services; computer software design and development services; design and development of computer hardware and software solutions for the security of mobile apparatus, connected objects and apparatus; design and development of computer hardware and software solutions for the protection of transactions, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects; development of programs for computers and microprocessors; computer programming services, namely, microprocessor programming services; computer programming services; design, development and technical study of computer systems; design, development and technical study of data exchange systems in the nature of computer systems; design and development of programs for data encryption and decryption; computer system analysis; technical assistance being troubleshooting computer and software security problems in the field of data communication; remote monitoring services for computer systems to ensure proper and secure functioning; design, development, customization and updating of computer software and programs; research and development of new products for others; computer software consulting services; computer consulting services; information technology (IT) consulting services; information, consultancy and consulting services in the field of telecommunications and communications technology security; and information, consultancy and consulting services in the field of computer security, namely, transaction security, exchanges of computer data and data contained in electronic apparatus, particularly mobile apparatus, connected apparatus and connected objects”

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 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.

 

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

 

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. §2.191; 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.

 

 

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.  

 

 

 

/C. Scott Strickland/

C. Scott Strickland

Examining Attorney

Law Office 122

scott.strickland@USPTO.gov

571-272-3277

 

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 6/26/2019 FOR U.S. APPLICATION SERIAL NO. 88374137

 

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 6/26/2019 (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.