To: | Not for Radio, LLC (trademark@wavsip.com) |
Subject: | U.S. Trademark Application Serial No. 88415191 - HYDRO - NFR1T001 |
Sent: | July 18, 2019 08:21:53 PM |
Sent As: | ecom118@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88415191
Mark: HYDRO
|
|
Correspondence Address: WEAVER AUSTIN VILLENEUVE & SAMPSON LLP
|
|
Applicant: Not for Radio, LLC
|
|
Reference/Docket No. NFR1T001
Correspondence Email Address: |
|
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 18, 2019
DEFERRED SEARCH
Identification of Goods and Services
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Class 9
The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and services in three 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). Applicant must specify the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
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).
For example, the following are acceptable identifications for software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” Finally, the following are acceptable identifications for non-downloadable game software in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a).
Applicant may adopt the following identification, if accurate:
Downloadable computer software for (indicate purpose or function of the software, and if content- or field-specific, the content or field of use of the software); downloadable and recorded computer software (indicate purpose or function of the software, and if content- or field-specific, the content or field of use of the software); computer software, namely, downloadable and recorded computer software development tools for developing software and firmware for networking equipment and for software-defined networking; computer hardware; computer hardware for networking applications
Class 42
Computer services, namely, integration of computer software into multiple systems and networks; software as a service (SAAS) namely, hosting software for use by others for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; software as a service (SAAS) services featuring computer software development tools for developing software and firmware for networking equipment and for software-defined networking; computer software consulting; computer hardware design and development consulting.
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.
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
/Kelley L. Wells/
Trademark Attorney
Law Office 118
571-272-9312
kelley.wells@uspto.gov
RESPONSE GUIDANCE