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: 6/18/2019

 

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:

• Identification/classification of goods and services
• Basis of application omitted

• Signed declaration omitted 

 

IDENTIFICATION OF GOODS/SERVICES INDEFINITE

 

The identification of goods and is indefinite and must be clarified because terms are overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, with regard to Class 9, the applicant must indicate that the software is “downloadable” or “recorded on computer media,” otherwise, “online non-downloadable computer software” is classified in Class 42.  Additionally, please see the minor requirements bolded and underlined below with regard to Classes 35 and 42.  Applicant may adopt the following identification, if accurate:  

 

1. Downloadable computer software for accounting, bookkeeping, financial and business transaction processing management, financial and business transaction management, tax preparation and tax planning, business process management, and financial planning; downloadable computer software for use in the field of personal and business finance for accounting, project costing management and tax management; downloadable computer software for use in the management of payroll; downloadable computer software for administering employee payroll; downloadable computer software for use in the management of benefit plans, insurance plans, retirement plans, unemployment insurance plans, and pre-paid health care plans; downloadable computer software for creating, customizing, and managing invoices, recording payments, and issuing receipts; downloadable computer software for use in organizing, servicing and tracking sales, collections and receivables data; downloadable computer software for tracking income, expenses, sales, and profitability by business location, department, type of business, or other user set field; downloadable computer software for customer relationship management; downloadable computer software to calculate and charge sales tax and to create reports to pay sales tax to appropriate tax agencies; downloadable computer software for credit card invoicing and credit card payment processing; downloadable computer software for managing online bank accounts; downloadable computer software for controlling access to financial information via electronic permission settings; downloadable computer software to create, customize, print, export, and e-mail purchase orders; downloadable computer software to track time worked by employees and subcontractors; downloadable computer software to create and manage budgets; downloadable computer software to create price quote estimates and transfer price quote estimates to invoices; downloadable computer software to automate creation of invoices; downloadable computer software to create, customize, print, export, and e-mail financial reports, business reports, balance sheets, profit and loss statements, cash flow statements, and taxable sales reports; downloadable computer software to create, print, and track checks and purchase orders; downloadable computer software to track sales, expenses, and payments; downloadable computer software to analyze the financial status of businesses and industries; downloadable computer software to manage customer lists, e-mail and print sales forms, and track running balances; downloadable computer software for inventory management; downloadable computer software to import contacts and financial data from other electronic services and software; downloadable computer software for synchronizing data among computers and mobile devices; downloadable computer software for database management, data aggregation, data reporting, and data transmission; downloadable computer software for online backup of electronic files; downloadable computer software and hardware for use in transaction processing, accounting, receipt printing, customer relationship management, inventory management and operations management, all in the field of point of sale transactions and retail management; cash drawers, namely, cash registers; computer printers; point of sale printers and terminals; credit card and debit card readers and scanners; bar code readers and scanners; credit card and secure electronic transaction processing terminals and computer hardware.  (Class 9)

 

2. Online business management services in the field business finance; online accounting and bookkeeping services; providing payroll preparation, payroll tax assessment, and payroll tax filing services; member benefits program, namely, customer loyalty services for commercial, promotional and/or advertising purposes that provides a variety of amenities to member accounting professionals, computer consultants, tax professionals, and business consultants; trade association services, namely for member accountants; membership club services, namely, providing on-line information to members in the fields of branding, business development, business marketing, and marketing advertising; marketing consultation; online marketing and promotional services; online advertising of the goods and services of others; providing search engine marketing information; providing product and computer software discounts, namely, administration of a program for enabling participants to receive free product samples and enabling participants to obtain discounts on products and discounts on computer software.  (Class 35)

 

3.      Providing temporary use of online non-downloadable software for accounting, bookkeeping, online financial and business transaction processing management, financial and business transaction management, tax preparation and tax planning, business process management, and financial planning; providing temporary use of online non-downloadable software for use in the field of personal and business finance for accounting, project costing management and tax management; providing temporary use of online non-downloadable software for use in the management of payroll; providing temporary use of online non-downloadable software for administering employee payroll; providing temporary use of online non-downloadable software for use in the management of benefit plans, insurance plans, retirement plans, unemployment insurance plans, and pre-paid health care plans; providing temporary use of online non-downloadable software for creating, customizing, and managing invoices, recording payments, and issuing receipts; providing temporary use of online non-downloadable software for use in organizing, servicing and tracking sales, collections and receivables data; providing temporary use of online non-downloadable software for tracking income, expenses, sales, and profitability by business location, department, type of business, or other user set field; providing temporary use of online non-downloadable software for customer relationship management; providing temporary use of online non-downloadable software to calculate and charge sales tax and to create reports to pay sales tax to appropriate tax agencies; providing temporary use of online non-downloadable software for credit card invoicing and credit card payment processing; providing temporary use of online non-downloadable software for managing online bank accounts; providing temporary use of online non-downloadable software for controlling access to financial information via electronic permission settings; providing temporary use of online non-downloadable software to create, customize, print, export, and e-mail purchase orders; providing temporary use of online non-downloadable software to track time worked by employees and subcontractors; providing temporary use of online non-downloadable software to create and manage budgets; providing temporary use of online non-downloadable software to create price quote estimates and transfer price quote estimates to invoices; providing temporary use of online non-downloadable software to automate creation of invoices; providing temporary use of online non-downloadable software to create, customize, print, export, and e-mail financial reports, business reports, balance sheets, profit and loss statements, cash flow statements, and taxable sales reports; providing temporary use of online non-downloadable software to create, print, and track checks and purchase orders; providing temporary use of online non-downloadable software to track sales, expenses, and payments; providing temporary use of online non-downloadable software to analyze the financial status of businesses and industries; providing temporary use of online non-downloadable software to manage customer lists, e-mail and print sales forms, and track running balances; providing temporary use of online non-downloadable software for inventory management; providing temporary use of online non-downloadable software to import contacts and financial data from other electronic services and software; providing temporary use of online non-downloadable software for synchronizing data among computers and mobile devices; providing temporary use of online non-downloadable software for database management, data aggregation, data reporting, and data transmission; providing temporary use of online non-downloadable software for online backup of electronic files; providing temporary use of online non-downloadable software for use in transaction processing, accounting, receipt printing, customer relationship management, inventory management and operations management, all in the field of point of sale transactions and retail management; technical support services, namely, troubleshooting of computer software problems, web sites, online services, web and online application problems, mobile application problems, and network problems; technical support services, namely, help desk services; computer services, namely, synchronizing and integrating data among computers and mobile devices; computer consultation services; data hosting services, namely, hosting digital content of others; hosting software for use by others for use in managing, organizing and sharing data on computer servers on a global computer network

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or 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.

 

SIGNED DECLARATION OMITTED

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a)-(c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.

 

TRADEMARK APPLICATION BASIS OMITTED

 

Applicant has not specified a filing basis in the application.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806.  Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. 

 

An applicant may add one or more of the following four bases to an application after filing:

 

(1)        Use of the mark in commerce under Trademark Act Section 1(a);

 

(2)        A bona fide intention to use the mark in commerce under Section 1(b);

 

(3)        A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or

 

(4)        A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).

 

Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services.  37 C.F.R. §2.34(b); TMEP §806.02(b).

 

For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

Requirements for Trademark Act Section 1(a) Basis:

 

To amend an application to one based on use of the mark in commerce under Trademark Act Section 1(a), an applicant must provide the following:  (1) a statement that “the mark is in use in commerce and was in use in commerce as of the application filing date;” (2) dates of first use of the mark; (3) a specimen for each class and a statement that “the specimen(s) was in use in commerce at least as early as the application filing date;” and (4) verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of these two statements and the dates of first use.  See 37 C.F.R. §2.34(a)(1); TMEP §§903, 904.

 

For more information about Section 1(a) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

Requirements for Trademark Act Section 1(b) Basis:

 

To amend an application to one based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), an applicant must provide the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  See 37 C.F.R. §2.34(a)(2).

 

For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

SEARCH OF THE RECORDS

 

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).

 

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.  

 

 

 

/Caroline E. Wood/

Examining Attorney

Law Office 110

571-272-9243

caroline.wood@uspto.gov

(responses are not accepted via e-mail)

 

 

 

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 6/18/2019 FOR U.S. APPLICATION SERIAL NO. 88411925

 

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 6/18/2019 (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.