Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  November 07, 2019

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is supplemental to and supersedes the previous Office action issued on June 27, 2019 in connection with this application.  Requirements relevant to the mark in the subject application were inadvertently omitted.  See TMEP §§706, 711.02.  Specifically, the identification of goods and services required additional amendments.  The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

• NEW ISSUE:  Amendments to Identifications of Goods and Services Required

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

Amendments to Identifications of Goods and Services Required

 

THIS PARTIAL REQUIREMENT APPLIES

ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Wording in the identifications is indefinite and must be clarified for the following reasons.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification for “computer operating system software” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

Particular wording in the proposed amendment to the identification in International Class 42 is also not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  In particular, the amendments remove the limiting language “Public cloud and managed private cloud computer services” and “public cloud and managed private cloud object storage services” from the original application, which should be maintained.  The examining attorney apologizes for the confusion.  Additionally the wording in the identification should be amended to be read more clearly.  See the bold text below. 

 

Applicant may amend the identification to clarify or limit the goods or services, but not to broaden or expand the goods and 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 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.

 

Applicant may substitute the following wording, if accurate:

 

International Class 9:  Downloadable software for lifecycle management and orchestration of cloud computing and cloud object storage environments; downloadable software for converging and managing hybrid cloud computing environments; downloadable software for creating and managing cloud computing infrastructure; downloadable software for creating and managing cloud object storage infrastructure; downloadable computer operating system software

 

International Class 42:  Public cloud and managed private cloud computer services, namely, integration of private and public cloud computing environments and cloud hosting provider services; consulting services in the field of cloud computing; public cloud and managed private cloud object storage services in the nature of providing virtual computer environments through cloud computing; technical consulting services related to the implementation and management of public cloud and managed private cloud computing environments and object storage environments; technical support services, namely, providing support and maintenance services related to public cloud and private cloud computing environments and object storage environments in the nature of troubleshooting of computer software programs problems and monitoring technological functions of computer network systems

 

 

RESPONSE GUIDELINES

 

Partial Requirements

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Classes 9 and 42 will be deleted from the application: 

 

International Class 9:  computer operating system software;

 

International Class 42:  Computer services, namely, integration of private and public cloud computing environments, cloud hosting provider services; Providing virtual computer environments through cloud computing; technical support services, namely, providing support and maintenance services related to public cloud and private cloud computing environments and object storage environments namely, troubleshooting of computer software programs, monitoring technological functions of computer network systems.

 

The application will then proceed with the following goods and services only:

 

International Class 9:  Downloadable software for lifecycle management and orchestration of cloud computing and cloud object storage environments; downloadable software for converging and managing hybrid cloud computing environments; downloadable software for creating and managing cloud computing infrastructure; downloadable software for creating and managing cloud object storage infrastructure;

 

International Class 42:  Consulting services in the field of cloud computing; technical consulting services related to the implementation and management of public cloud and managed private cloud computing environments and object storage environments.

 

 See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action  

 

/Rebecca T. Caysido/

Trademark Examining Attorney

Law Office 123

571-270-0926

Rebecca.Caysido@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 November 07, 2019 for

U.S. Trademark Application Serial No. 88392453

 

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. 

 

 

Caysido, Rebecca

/Rebecca T. Caysido/

Trademark Examining Attorney

Law Office 123

571-270-0926

Rebecca.Caysido@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 November 07, 2019, 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.”