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: 6/13/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

 

• Advisory: Prior-Pending Application
• Classification and Identification of Services – Amendment Required

 

 

ADVISORY: PRIOR-PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 87706953 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.

 

Applicant must respond to the requirement set forth below.

 

 

CLASSIFICATION AND IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED

 

Applicant has classified “providing a web site featuring information for employee benefits brokers and consultants in the field of . . . financial records management regarding pensions for administration of the funds” in International Class 35; however, the proper classification is International Class 36. 

 

Applicant must clarify the wording “Providing computing, data,  . . . services to employers, namely, payroll processing, tax deposit filing and reporting, human resources management, employee time and attendance record keeping, employee leasing, and business management consulting; providing electronic payroll tax preparation” in the identification of services in International Class 35 and “Providing computing, data, . . . services to employers, namely, insurance claims administration in the field of unemployment compensation” in the identification of services in International Class 36 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, the wording in International Class 35 is indefinite because it does not make clear what the services are – whether it is computer data entry services or systematization of data in computer databases. Further, it could identify services in more than one international class: computer data entry services are in International Class 35, insurance premium rate computing services are in International Class 36, and computer programming services are in International Class 42. 

 

The wording “business administration of employee benefit plans concerning legal services” in the identification of services for International Class 35 and “providing a web based system and online portal featuring non-downloadable software for employee benefits brokers and consultants to use in employee benefits administration, pension record keeping, and unemployment compensation management” in the identification of services for International Class 42 is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording in International Class 35 is not acceptable pursuant to the U.S. Acceptable Identification of Goods and Services Manual (hereinafter Trademark ID Manual) because administration of employee benefit plans, other than plans concerning insurance and finance, is classified in Class 35 only where services involve the organizing and coordination of business functions. Likewise, the wording “providing a web based system and online portal featuring non-downloadable software” in the identification of services in International Class 42 is not acceptable pursuant to the Trademark ID Manual because it is unclear whether the applicant is offering goods in the nature of downloadable software in Class 9, or whether the applicant is offering services in the nature of website hosting in Class 42.

 

The wording “providing electronic payroll tax preparation” in the identification of services for International Class 35 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, this wording could encompass payroll and tax preparation services in International Class 35 and payroll tax debiting services in International Class 36.

 

The wording “employee time and attendance record keeping” in the identification of services in International Class 35 is indefinite and must be clarified because it is does not specify whether it is offered for others.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Likewise, the wording “providing business records management regarding employment and statistical data to businesses and employers” in the identification of services in International Class 35 is indefinite and must be clarified because it is does not specify whether the services offered for business purposes.

 

The wording “providing instructor-led classroom instruction and online educational classroom instruction for employers pertaining to payroll processing, tax deposit filing and reporting, employee time and attendance record keeping, pension record keeping, employee leasing, submitting and tracking vendor invoices” in the identification of services in International Class 41 is indefinite and must be clarified because “classroom instruction” wording is generally used in connection with pre-kindergarten through 12th grade educational levels.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Applicant may substitute the following wording, if accurate (the examining attorney’s suggestions appear in bold font below):

 

Class 35:         Providing computing {identify specific service involving computing in International Class 35, e.g., computer data entry services}, data {identify specific service involving computing in International Class 35, e.g., processing services}, and professional services to employers, namely, payroll processing, tax deposit filing and reporting, human resources management, employee time and attendance record keeping for others, employee leasing, and business management consulting; providing electronic payroll and tax preparation; providing business records management regarding employment and statistical data to businesses and employers for business purposes; business services, namely, timekeeping services for others; business management services; business advisory and consulting services relating to compliance with statutory, industry or best practice provisions; providing statistical information for business purposes; outsourcing services in the fields of human resources, recruitment and staffing; providing business management services to businesses and employers; providing financial records management regarding payroll data to businesses and employers; business consulting services provided to businesses and employers; employment recruiting and staffing consultation; personnel recruitment services and employment agencies; providing on-line employment placement services, namely, matching resumes and potential employers via a global computer network; financial record keeping for pension accruement and payment purposes; business investigations; conducting business surveys; business research; business auditing; conducting employee surveys for others for purposes of improving employee performance and morale; administration of employee benefit plans concerning {indicate type of employee benefit plan, other than insurance or finance plans, e.g., child care, parking}; employment hiring, recruiting, placement, staffing and career networking services; testing to determine employment skills; financial record-keeping for regulatory compliance purposes; providing a web site featuring information for employee benefits brokers and consultants in the field of payroll processing, tax deposit filing and reporting, human resources management, business management, employee time and attendance record keeping for payroll purposes,  employee recruiting and outsourcing; Outsource service provider in the field of business analytics; providing business intelligence services; business succession planning; business organization advice; sales and use tax reporting in the nature of tax assessment; providing a web site featuring public policy information for employee benefits brokers and consultants in the field of health care benefits reform 

 

Class 36:         Providing {identify specific service involving computing in International Class 36, e.g., insurance premium rate} computing, {identify specific service involving computing in International Class 36, e.g., electronic processing of insurance claims and payment} data, and professional services to employers, namely, insurance claims administration in the field of unemployment compensation; financial management in the field of unemployment compensation; Financial consulting services; financial research services; insurance claims administration; financial affairs and monetary affairs, namely, financial information, management and analysis services; news reporting services in the field of financial news; payroll tax debiting services; administration of employee benefit plans concerning insurance and finance; workers compensation claims administration; financial administration of employee pension plans and retirement plans; providing a web site featuring information for employee benefits brokers and consultants in the fields of administration of employee benefit plans concerning insurance and finance regarding unemployment compensation, and financial records management regarding pensions for administration of the funds

 

Class 41:         Educational and training services, namely, providing instructor led and online classes, seminars, and workshops in the field of human resources; providing instructor-led classes and instruction and online educational classes and instruction for employers pertaining to payroll processing, tax deposit filing and reporting, employee time and attendance record keeping, pension record keeping, employee leasing, submitting and tracking vendor invoices; employee training in the field of career development; providing online non-downloadable electronic publications, namely, newsletters, white papers, case studies and magazines in the field of human resources, payroll administration, pre-employment and benefits administration, computer security and information technology, career development and disaster planning, and computer system security 

 

Class 42:         Providing temporary use of online non-downloadable software for providing employers with a compatible interface between payroll processing software and software for financial management and management of human resources; providing temporary use of online non-downloadable computer software in the field of accounting for preparing and processing business employee payroll for employers, and for printing payroll documents, namely, reports, checks, and tax forms; providing temporary use of non-downloadable computer software for employee and personnel related services, namely, payroll processing, preparation, and administration, payroll tax calculation and preparation, monitoring tax regulation compliance, electronically processing payroll, tax filing and reporting, printing payroll reports, checks, and tax forms, employee benefits administration, managing human resources documents, providing employee risk and safety training, providing information about employee counseling and support programs, administering employee pension and retirement funds and employee flexible spending accounts, administering workers compensation claims and payments, processing and storing employee recruiting documents, conducting pre-employment background screening, processing employee time and attendance records, scheduling appointments, providing information for new employee assimilation, employee recordkeeping management, recording and tracking employee performance management, management of compensation, providing information about employee job training and professional development and succession planning; providing a web site featuring technology that enables employee benefits brokers and consultant users to view online videos in the field of benefits administration, payroll processing, tax deposit filing and reporting, human resources management, business management, employee time and attendance record keeping, pension record keeping, employee recruiting, pre-employment background screening, outsourcing, health care reform and unemployment compensation management services; providing a website featuring online non-downloadable software that enables employee benefits brokers and consultants handle employee benefits administration, pension record keeping, and unemployment compensation management; application service provider services, namely, hosting, managing, developing, and maintaining software applications of others in the field of employment to allow off-site field employees to submit time and labor data to employers via wireless communication and wireless delivery of content to handheld computers and mobile electronic devices; Computer technology support services, namely, help desk services; planning, design, and implementation of computer technologies for others

 

Applicant’s 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 services or add 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 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

RESPONSE GUIDELINES

 

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 requirement 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 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.  

 

 

/Maryna Koberidze/

Trademark Examining Attorney

Law Office 127

Maryna.koberidze@uspto.gov

571-270-7630

 

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 6/13/2019 FOR U.S. APPLICATION SERIAL NO. 88414446

 

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 6/13/2019 (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.