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: 6/21/2019

 

This Office action is supplemental to and supersedes the previous Office action issued earlier this day, June 21, 2019, in connection with this application.  The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, a Specimen Refusal was omitted.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

The issues from the previous Office action are set out below for convenience. Thus, applicant must address all issues raised in this Office action only. Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues

• Specimen Refusal
• Particular Entries in the Identification of Goods and Services are Indefinite

Specimen Refusal

 

• Regarding Class 9 Goods

 

Registration is refused because the specimen in International Class 9 is not acceptable as a display associated with downloadable software and appears to be mere advertising material; thus, the specimen fails to show the applied-for mark in use in commerce for that international class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Specifically, the specimen fails to provide the means to enable the user to download or purchase the software from the website.  See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(e), (i) et seq.  Without this feature, the specimen is mere advertising material, which is not acceptable as a specimen to show use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.04(b), (c). The Specimen is also deficient for applicant’s Class 9 goods as the function of the software is wholly unclear. There is no way to glean what functions the software performs from the Specimen shown.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program.  See TMEP §904.03(e), (i), (j).  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.

 

• Regarding Classes 35, 41 and 42

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Classes 35, 41 and 42.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  Specifically, the Specimen depicts an icon for a bit of downloadable software, perhaps a software application, that may be downloadable. There is no indication that applicant provides advertising services, promotion services, software as a service in the fields specified, or gaming software in the specified fields. This specimen does not show applicant’s mark in use in commerce in connection with any services.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Response Options

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the software identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.  

 

Particular Entries in the Identification of Goods and Services are Indefinite and Broad

 

Applicant must clarify the in the identification of goods and services because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id. Additionally, Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id. As the identification could include goods and services in other classes beyond the originally assigned classes, clarification is required.

 

Class 9 Issues:

• “App, web app, and website Internet platform for individual and group development, publishing, distribution, use of and compensation for digital content” in Class 9 is indefinite and broad.
• • First, the wording does not make clear the nature of the software and could identify goods and/or services in two international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii). As applicant does not identify game software, the software falls into Class 9 or 42. Applicant may clarify by explaining the nature of the “app” and “web app” goods, e.g. software applications, as well as whether they are downloadable or non-downloadable. If the goods are downloadable, applicant must clarify how the software is both downloadable and is connected to a “website”. If, for example, applicant provides software applications that are downloadable via a website, this may be specified.
  • Applicant must also clarify the function or purpose of the software applications. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The function of “group development” is unclear. What is being developed? Applicant must also clarify how “compensation” is a function. If, for example, applicant’s software is for use in “creative development of publications by a group, publishing, publication distribution, and acquiring the rights to and paying for digital content”, this may be clarified.
  • The wording “website internet platform” is particularly unclear. If applicant provides downloadable goods, namely, a downloadable computer software platform which is accessible via an internet website, this may be clarified and the goods may remain in Class 9. Applicant must clarify the function of the software. If applicant provides Platform as a Service featuring particular software, this is a Class 42 service.

 

Class 35 Issues:

• “App, web app and website Internet platform including advertising, promoting, viewing and purchasing of goods and services” is indefinite and broad. It is not clear whether applicant is providing goods, in the form of software applications, services in the nature of the provision of temporary access to online software applications, or services such as advertising, promotion, and the like, via various applications.
• • If applicant is providing downloadable software applications that perform the function of advertising, promotion, and viewing and purchasing of goods and services, this must be clarified and the goods must be moved to Class 9. Applicant must also clarify the function of this software, as it is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d). If the software performs the function of advertising, viewing and promoting, this may be clarified. If, however, the software application provide temporary access to software that features online retail stores, this is a Class 42 service. Lastly, if applicant provides these services via an online platform and/or software, this must be clarified, and the goods may remain in Class 35.
  • Further, applicant must clarify the primary service associated with the goods and services for purchase. If the application provides access to an online marketplace for buyers and sellers of goods and services, this may be clarified. As mentioned above, applicant must clarify the nature of their platform goods and/or services. This could include downloadable software platforms or platform as a service in Class 42. It could also be a Class 35 service.

 

Class 41 Issues:

• App, web app and website Internet platform including content for interest, ability, skill, faculty and behavioral development.
• • As in the entries above, this entry is indefinite and broad. As stated above, the wording does not make clear the nature of the software and could identify goods and/or services in two international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii). Applicant may clarify by explaining the nature of the “app” and “web app” goods, e.g. software applications, as well as whether they are downloadable or non-downloadable.
  • Applicant must also clarify the function or purpose of the software applications. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The current “function” is not clear. What function does the software perform in relation to one’s interest, ability, skill and faculty? How does the software aid in behavioral development. Until it is clear what the software does, it will remain indefinite.

 

Class 42 Issues:

• “Software as a Service and Internet platform including analytics and scientific data, evaluations, estimates, and research and reports for the analysis, prediction and artificial intelligence of interest, ability, skill, faculty and behavioral development” is indefinite. Applicant must clarify the function of the software featured via applicant’s Software as a Service services. Applicant must also clarify their platform services, e.g. platform as a service, as well as the function of the software platforms. The current function is vague. It is not clear what the software is doing in relation to data, and it is not clear what the software is for use in analyzing, evaluating, estimating, researching and reporting. If applicant’s software is for analyzing, evaluating, researching and reporting on topics in the field of psychology, namely, the interests, abilities, skills, faculties and behavioral development of patients, this may be clarified. This is just one possible suggestion. Applicant must provide the clarity needed to reflect what their software does.

 

Class 9: Downloadable software applications, including downloadable software applications accessible via a website, for use in creative development of publications by a group, publishing, publication distribution, and acquiring the rights to and paying for digital content; downloadable computer software platforms, accessible via a website, for use in creative development of publications by a group, publishing, publication distribution, and acquiring the rights to and paying for digital content; Downloadable software applications, including downloadable software applications accessible via a website, for visiting online retail stores that feature advertisements, promotions and products and an online marketplace for buyers and sellers of goods and services; downloadable computer software platforms, accessible via a website, for visiting online retail stores that feature advertisements, promotions and products, and an online marketplace for buyers and sellers of goods and services; Downloadable software applications, including downloadable software applications accessible via a website, for {specify function here that has to do with interest, ability, skill, faculty and behavioral development, e.g. providing children with behavioral development activities that peak their interest, increase their ability to recognize particular emotions, etc.}; Downloadable software applications, including downloadable software applications accessible via a website, for {specify function here that has to do with interest, ability, skill, faculty and behavioral development, e.g. providing children with behavioral development activities that peak their interest, increase their ability to recognize particular emotions, etc.}

 

Class 35: Advertising and promotional services, accessible via an online platform and via computer software applications; Provision of an on-line marketplace for buyers and sellers of goods and services, accessible via computer software applications an online platform

 

Class 41: Providing temporary use of online non-downloadable game software applications for providing games intended to peak interest, increase one’s gaming ability and skill, peak one’s faculty, and contribute to behavioral development

 

Class 42: Providing temporary use of online non-downloadable software applications for use in creative development of publications by a group, publishing, publication distribution, and acquiring the rights to and paying for digital content; platform as a service featuring computer software platforms for use in creative development of publications by a group, publishing, publication distribution, and acquiring the rights to and paying for digital content; Providing temporary use of online non-downloadable software applications for visiting online retail stores that feature advertisements, promotions and products and an online marketplace for buyers and sellers of goods and services; platform as a service, featuring computer software platforms for visiting online retail stores that feature advertisements, promotions and products and an online marketplace for buyers and sellers of goods and services; providing temporary use of online, non-downloadable software for advertising and promotion; Providing temporary use of online non-downloadable software applications for {specify function here that has to do with interest, ability, skill, faculty and behavioral development, e.g. providing children with behavioral development activities that peak their interest, increase their ability to recognize particular emotions, etc.}; platform as a service featuring software for {specify function here that has to do with interest, ability, skill, faculty and behavioral development, e.g. providing children with behavioral development activities that peak their interest, increase their ability to recognize particular emotions, etc.}; Software as a Service featuring software for analyzing, evaluating, researching and reporting on topics in the field of psychology, namely, the interests, abilities, skills, faculties and behavioral development of patients; Platform as a Service featuring software platforms for analyzing, evaluating, researching and reporting on topics in the field of psychology, namely, the interests, abilities, skills, faculties and behavioral development of patients

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods 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 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 Wish to Seek Trademark Counsel

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Response to Office Action

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

571-270-5984

Amanda.Rosen@USPTO.gov

 

 

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 6/21/2019 FOR U.S. APPLICATION SERIAL NO. 88405109

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 6/21/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

571-270-5984

Amanda.Rosen@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.