Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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 26, 2019

 

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On July 26, 2019, the examining attorney and John Christopher, attorney of record, discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

 

SUMMARY OF ISSUES:

• IDENTIFICATION OF GOODS AND SERVICES
• MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

 

IDENTIFICATION OF GOODS AND SERVICES

The identification of goods and services is unacceptable and must be clarified because it contains multiple indefinite entries. For example, the applicant must indicate that all software in Class 9 is either downloadable or recorded in order for it to be properly classified, and must indicate the specific “scientific and technological services” in Class 42. Additionally, the wording “Scientific and technological services” in Class 42 is overbroad as it could include services in other classes including examination of fingerprints and handwriting for forensic scientific intelligence in Class 45. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording (with added wording bolded), if accurate:

 

Class 9: Equipment for video conference services, in particular cameras, digital cameras, computer hardware, downloadable software for digital processing of motion pictures; electronic appliances for control and surveillance, in particular cameras, digital cameras; computer hardware and downloadable computer software to control the operation of photo cameras and video cameras for viewing and recognition of predefined objects and persons, search for and/or playing audio, video, images and other multimedia content; downloadable computer software for the production, recording, downloading, transmitting, reception, editing, extraction, coding, de-coding, viewing, playing, saving, manipulating, inspection and organization of text, data, images, sound files, video files and digital media; computer systems comprising of hardware and downloadable software for audio-, video- and web conferences; computer hardware for digital image processing; downloadable software for detection of content on whiteboard and other writing surfaces for reproducing enhanced displays of the content; downloadable software for detection of content on electronic monitors for reproducing enhanced displays of the content; downloadable software for image processing algorithms for the use and recognition of humans, movement, objects in rooms and the size of rooms; downloadable software for image processing algorithms and video analysis, related to medical diagnostics, teaching, surveillance, 3D-measurements, virtual reality (VR) and augmented reality (AR); downloadable software for audio detection and audio signal processing, related to sound recordings from rooms; Videoconferencing systems; systems, apparatus and equipment for real-time, multimedia and multi-party communication over computer networks, namely, downloadable software and Web-based downloadable software applications and computer hardware; apparatus for receiving, storing, rendering, playback, recording and transmission of audio or video, namely, _______ [applicant must indicate the generic name of the goods, e.g., computers, smartphones, and tablet computers]; downloadable communications software and applications suitable for web browsers, personal computers or mobile phones for ______ [applicant must indicate the function of the software, e.g., detection of content on electronic monitors for reproducing enhanced displays of the content]; systems and equipment for network communications infrastructure, namely, downloadable network management software

 

Class 35: Electronic recordings, cataloging and storing of meeting records in the nature of business records management; retail store services featuring equipment for video conference services, in particular cameras, digital cameras, computer hardware, computer software, including software for digital processing of motion pictures (video), electronic appliances for control and surveillance, in particular cameras, digital cameras, computer hardware and computer software to control the operation of photo cameras and video cameras for viewing, recognition of predefined objects and persons, search for and/or playing of sound, video, images and other multimedia content, computer software for production, recording, downloading, transmitting, receiving, editing, extraction, coding, decoding, viewing, playing, saving, manipulating, inspection and organization of text, data, images, sound files, video files and digital media, hardware, software and computer systems for audio, video and web conferences, appliances for recording, transmitting and reproduction of sound and images, computer processing equipment and computer hardware, digital image processing, software for detection of whiteboard and other writing surfaces, enhancement and recognition of content on whiteboard and other writing surfaces, software for detection of electronic monitors, enhancement of content and recognition of content on electronic monitors, software for image processing algorithms for recognition of humans, movement, objects in rooms and the size of rooms, software for image processing algorithms and video analysis, related to medical diagnostics, teaching, surveillance, 3D-measurements, virtual reality (VR) and augmented reality (AR), software for audio detection and audio signal processing, related to sound recordings from rooms

 

Class 38: Telecommunications services, namely, video conferencing and collaboration services being video conferencing; providing web-based multi-media teleconferences, video conferences and online meeting services allowing simultaneous and synchronized distribution, sharing, editing and discussion of documents, data and images of the participants over an online browser; services for teleconferences, video conferences, web conferences and streaming of video blogging; mobile phone communications, telecommunications consulting in the nature of technical consulting in the field of audio, text, and visual data transmission; services for voice over internet protocol (VOIP); telecommunications counseling in regards to transmission of data-, voice- and video communications network; providing transmitting services of sound, images and data with multiple participants; providing electronic transmission of sound, images and data for the use of online conferences; streaming of data; data assisted transmission of messages and images; video conferencing and teleconferencing services; web-conference services, namely, video conferencing; telecommunication services, namely reception and transmission of messages, documents, pictures and other data via electronic transmission; audio, video, data and graphic communication network, namely, transmission of audio, video, data, and graphics; providing real-time multimedia and multi-party communication over computer networks; leasing of telecommunications equipment; leasing of access time to a global computer networks; providing access to web sites that offer teamwork collaboration, document provisioning, media provisioning and operation services

 

Class 41: Educational service, namely, classes, seminars and workshops in the field of computer programming, business training, computer education training; publication and publishing of papers, books, brochures, manuals or online information on the inter-operability or compatibility of communication hardware and software to support video conferences and application sharing within and across groups of companies, service providers and consumers

 

Class 42: Design and development of software, including in particular production of videoconference services; counseling, consultation services, and customer support services, namely, troubleshooting computer software problems; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer network design services; software as a service (SAAS) services featuring software for database management; technical consultations and examinations in the field of computer networks development; computer network system design; Scientific and technological services and research and development related thereto, namely, ______ [applicant must indicate the specific services in Class 42, e.g., scientific research, research and development of computer software, and product development]; industrial analysis and research, namely, analysis of goods of others to assure compliance with industry standards and industrial research in the field of ______ [applicant must indicate the field of research, e.g., medical devices and pharmaceuticals]; design and development of computers and computer programs; design and development of equipment and software for telecommunications and video communications; temporary use of online non-downloadable teamwork and document management software; consulting services and technical support services relating to computer programming, computer network development, software, document management software, teamwork systems development and video conferencing systems development; leasing of software; leasing of telecommunications software

 

Class 45: Scientific services, namely, examination of fingerprints and handwriting for the purpose of forensic scientific intelligence

 

Applicant’s goods and 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 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).

 

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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 5 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

If the applicant has any questions or requires assistance in responding to this Office Action, please contact the assigned examining attorney.

 

 

How to respond.  Click to file a response to this nonfinal Office action.

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.  

 

 

/Stephanie Rydland/

Examining Attorney

Law Office 117

(571) 272-7226

stephanie.rydland@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 26, 2019 for

U.S. Trademark Application Serial No. 88422772

 

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. 

 

 

 

/Stephanie Rydland/

Examining Attorney

Law Office 117

(571) 272-7226

stephanie.rydland@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 26, 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.”