Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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 25, 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: 

 

• Two or More Earlier-filed Pending Application – Application Currently Not Entitled to Register:
• Identification of Goods and Services – Clarification Required:

 

Search Results – Two or More Earlier-filed Pending Application – Application Currently Not Entitled to Register:

 

The filing dates of pending U.S. Application Serial Nos. 88220436 and 88446285 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

Identification of Goods and Services – Clarification Required:

 

The identification for software in International Class 09 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/or 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.”  For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.

 

The Class 12 identification of goods is indefinite and must be clarified because several listings of “land vehicles” require clarification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification 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.

 

The Class 39 identification of services is indefinite and must be clarified because several listings require further clarification as to the specific service being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification 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.

 

The wording “rental of security apparatus” in the identification of services for International Class 45 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 “Rental of computers relating to computer security and prevention of computer risks” in Class 42 and also “Rental of security surveillance robots” in Class 45

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font.  Applicant may adopt the following identification of goods and services, if accurate:

 

Class 09:         “Computer hardware; computer hardware for communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer network; downloadable and recorded computer software for vehicle navigation; downloadable and recorded computer software for operating an autonomous vehicle; downloadable and recorded computer software for vehicle fleet management; downloadable and recorded computer software for coordinating, scheduling, booking, and dispatching vehicles for passenger and freight transport; downloadable and recorded computer software for managing freight transportation by truck and autonomous vehicles; navigation apparatus for vehicles; navigational instruments, namely, GPS navigation devices and satellite-aided navigation systems; steering apparatus for vehicles, namely, simulators for the steering and controlling of vehicles; radar apparatus; laser device for sensing distance to objects; laser object detectors for use on vehicles; lidar (light detection and ranging apparatus); vehicle infrared, acceleration, proximity, and velocity sensors; sensors for determining position, velocity, direction, and acceleration; downloadable mobile applications for coordinating transportation services; downloadable mobile applications for coordinating, scheduling, booking, and dispatching vehicles for passenger and freight transport and delivery services; downloadable and recorded computer software and hardware for vehicle fleet launching, coordination, calibrating, direction, and management; cameras; cameras for use with vehicles; transmitters of electronic signals; radios for vehicles; radio transmitters and receivers; global positioning system (GPS); simulators for driving or control of vehicles; vehicle drive training simulators; control units for regulating start-up electrical motors; apparatus for testing vehicle brakes; vehicle video recorder; downloadable mobile applications for booking taxis”

 

Class 12:         “Land vehicles; automobiles; trucks; freight land vehicles, namely, [specify goods by common commercial name, e.g., trains]; mass transit land vehicles, namely, [specify goods by common commercial name, e.g., buses]; autonomous cars; autonomous land vehicles, namely, [specify goods by common commercial name, e.g., trains]; driverless cars; electric vehicles, namely, electric cars and electric motor cycles; electrically-powered motor scooters; anti-theft devices and alarms for vehicles; motor vehicle alarm systems; steering units for land vehicles and parts thereof; drones; plastic parts for vehicles, namely, automotive exterior and interior plastic extruded decorative and protective trim; metal parts for vehicles, namely, automotive exterior and interior metal decorative and protective trim; strollers”

 

Class 35:         “Advertising and marketing services; market research by means of a computer database; compilation and systemization of information into computer databases; updating and maintaining data in computer databases; car auction services; business risk management services; business information management; online advertising services through computer communications networks; tracking, locating and monitoring of vehicles for commercial purposes; transportation services, namely, tracking of fleet vehicles for commercial purposes”

 

Class 39:         “Transportation services, namely, providing shuttle services  by {indicate specific means, e.g. bus, bicycle, golf cart}; transportation services, namely, making reservations and bookings for transportation; transportation of passengers by vehicle; transportation services, namely, providing temporary use of vehicles in the nature of [specify services further by common commercial name, e.g., motor vehicle sharing services]; transportation services, namely, providing travel by autonomous vehicles in the nature of [specify services further by common commercial name, e.g., taxi services]; car rental services; transport reservation services; freighting services; freight transportation by trucks and autonomous vehicles; transportation of passengers and freight by land vehicle; providing a website featuring information regarding autonomous car transportation services and scheduling transportation services; leasing of vehicles; transportation services, namely, coordinating the pickup and drop-off of passengers at designated or directed locations; motor vehicle sharing services, namely, providing temporary use of motor vehicles; providing taxi booking services via mobile applications”

 

Class 42:         “Providing online non-downloadable software services for transportation services, namely, coordinating, booking, and dispatching autonomous vehicles for transportation purposes; research and development into autonomous vehicles; research, design, and development of computer hardware and software for use with vehicle on-board computers for monitoring and controlling motor vehicle operation; research, design, and development of computer hardware and software for vehicle coordination, navigation, calibrating, direction, and management; installation, updating, and maintenance of computer hardware and software for use with vehicle on-board computers for monitoring and controlling motor vehicle operation; research, design, and development of sensors and for structural parts thereof; software as a service (SaaS) services featuring computer software for use as an application programming interface (API); advanced product research, design, and development in the field of artificial intelligence; mapping services; computer security consultancy; vehicle roadworthiness testing; conversion of data or documents from physical to electronic media; Recording data for others on optical, digital and magnetic media for electronic storage; consulting services in the field of cloud computing; cloud computing featuring software for use in operating autonomous vehicles”

 

Class 45:         “Monitoring of security alarm systems; dating services; online social networking services in the field of autonomous vehicles; internet-based social introduction service; computer software licensing; licensing of intellectual property; licensing of software for management of intellectual property; legal administration of licenses; granting of software licenses; stolen vehicle recovery services; stolen vehicle tracking; emergency roadside assistance services, namely, opening of locks; lost property services in the nature of tracking, locating, monitoring and returning services for recovering lost personal possessions, namely, lost property return; rental of security apparatus in the nature of [specify apparatus further by common commercial name, e.g., camera surveillance equipment]”

 

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

 

Responding to Office Action:

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.

 

If applicant has a question or amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to email or telephone the examining attorney to expedite the processing of the application.

 

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  

 

 

/Dominic Fathy/

Trademark Examining Attorney

Law Office 104

(571) 272-8801

dominic.fathy@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 25, 2019 for

U.S. Trademark Application Serial No. 88421564

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Dominic Fathy/

Trademark Examining Attorney

Law Office 104

(571) 272-8801

dominic.fathy@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 25, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”