To: | Integrated Solutions International, L.L. ETC. (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. Trademark Application Serial No. 88400636 - PICDECODE - 1136497 |
Sent: | July 05, 2019 11:09:32 AM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88400636
Mark: PICDECODE
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Correspondence Address: KILPATRICK TOWNSEND & STOCKTON LLP |
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Applicant: Integrated Solutions International, L.L. ETC.
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Reference/Docket No. 1136497
Correspondence Email Address: |
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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: July 05, 2019
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.
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).
IDENTIFICATION OF SERVICES – International Class 42
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Specifically, the wording “providing non-downloadable web-based software” needs further clarification. Applicant must add the wording “temporary use of” to further clarify the nature of the services.
In addition, the wording “SAAS for electronically verifying user identification, including age verification” needs clarification. The wording “SAAS” alone is not acceptable. Applicant may adopt the wording “Software as a service (SAAS) services, namely, hosting software for use by others for use in” or “Software as a service (SAAS) services featuring software for” followed by the wording “electronically verifying user identification, including age verification.”
Applicant may adopt the following identification, if accurate:
INTERNATIONAL CLASS 042: Providing temporary use of non-downloadable web-based software used for verifying personal information for age and identity verification; software as a service (SAAS) services featuring software for storage, sorting, categorizing, transmitting and sharing of data and information; Software as a service (SAAS) services featuring software for electronically verifying user identification, including age verification.
Please note that the identification of services for International Class 45 has been accepted.
An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
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.
Significance of Wording
To permit proper examination of the application, applicant must explain whether the wording in the mark “PICDECODE”, “PICDE CODE”, “PIC DECODE” or “PIC DE CODE” has any significance in the computer software, IT security or identification verification trade or industry or as applied to applicant’s services, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
How to respond. Click to file a response to this nonfinal Office action
/Sally Shih/
Sally Shih
Trademark Examining Attorney
Law Office 106
571-272-9712
sally.shih@uspto.gov
RESPONSE GUIDANCE