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 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: August 01, 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
- Notice of Prior Pending Application
- Amended Identification of Goods and Services Required
- Multiple-Class Application Requirements
Notice of Prior Pending Application
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.
The filing date of pending U.S. Application Serial No. 87421089 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.
Amended Identification of Goods and Services Required
The identification of goods and/or services must be clarified because many of the goods and/or services are indefinite and/or broad, and therefore, do not clearly and
specifically indicate the nature of goods and/or services for which registration is sought. Additionally, some of the goods and/or services are misclassified.
Therefore, applicant must amend the referenced wording below in accordance with the bolded guidance provided. Please note that, in some instances, examining attorney
has replaced any unacceptable wording with acceptable wording. Finally, if applicant adds one or more international classes to the application, applicant must comply
with the multiple-class application requirements specified in this Office action.
Applicant may substitute the following wording, if accurate: (bold indicates modified language)
- International Class 009: downloadable Computer software and application software for capture, exchange, recording,
collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health
and safety data, information and records; downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching,
sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by
means of databases, decentralised databases or via distributed or shared ledger technology; downloadable computer software and application software for capture, exchange,
recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and
management of data relating to compliance with health and safety regulations; downloadable computer software and application software for the validation, verification,
authentication and checking of data relating to compliance with health and safety regulations; downloadable computer software and application software for surveillance,
monitoring, event and incident management in the field of health and safety; downloadable computer software and application software for tracking data, documents, workflows and
systems relating to health and safety; downloadable computer databases and database systems for management of health and safety data, information and records; downloadable computer software and application software for ____ {specify function, e.g., compiling data, filing forms} relating to compliance with health and
safety laws and regulations
- International Class 042: IT services and technical support, assistance and consultancy, namely, ____ {specify the service,
e.g., troubleshooting, monitoring technological functions} relating to computer software and application software for project and data management in the field of health and safety; IT services
and technical support, assistance and consultancy, namely, ____ {specify the service, e.g., troubleshooting, monitoring technological functions} relating to computer software
and application software for project and data management in the field of compliance with health and safety regulations; design, development and programming of computer software for capture, exchange,
recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and
management of health and safety data, information and records; installation, maintenance, repair, integration, configuration, updating, programming and implementation of computer software for
capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection,
visualisation and management of health and safety data, information and records; design, development and programming of computer software for capture, exchange, recording, collection, storing,
processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance
with health and safety regulations; installation, maintenance, repair, integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording,
collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data
relating to compliance with health and safety regulations; provision of temporary use of non-downloadable software for searching, collection, capture, storage, processing, analysis, indexing,
organisation, compilation, sharing and management of health and safety data, information and records; provision of temporary use of non-downloadable software for use in checking and ensuring
compliance with health and safety laws and regulations; provision of temporary use of non-downloadable software for capture, exchange, recording, collection, storing, processing, searching, sharing,
reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by means of
databases, decentralised databases or via distributed or shared ledger technology; data security services, namely, ____ {specify the data security service, e.g., Design and
development of electronic data security systems}; digital asset management, namely, _____ {specify the service}; provision of data security services for computer and
communication networks, namely, ____ {specify the service, e.g., Computer security threat analysis for protecting data}; electronic data storage and back up services; design and
development of computer data models and of systems and methods for data entry, testing, measuring, monitoring and analysis; computer software services,
namely, providing temporary use of a web-based software platform that allows for virtual and remote health and safety-related services provided via the cloud; software as a service (SAAS) services
featuring non-downloadable software for remote services in the field of health and safety; testing, design and development of software and hardware used to analyse, collect,
define, display, manage, measure, monitor, share, track, and communicate health and safety data; environmental monitoring, planning, testing, inspection and assessment services; compilation of
environmental data and information; advisory, information and consultancy services relating to all the aforesaid services; Product safety testing; Food safety
testing and consultation related thereto; Conducting worksite surveys to determine if worksites meet employee health condition requirements and standards
- International Class 044: advisory, information, and consulting services in the field of health; Providing medical testing of
fitness and medical consultations to assist employees in making health, wellness and nutritional changes in their daily living to increase productivity and lower health care costs for
businesses
- International Class 045: Safety evaluation services, namely, _____ {specify service in class 45, e.g., Radiation safety
consulting, Food safety consultation}; health and safety risk management, namely, _____ {specify service in class 45, e.g., Security threat analysis for protecting personal
safety}; advisory, information and consultancy services relating to safety evaluation namely, _____ {specify service in class 45, e.g., Radiation safety consulting, Food safety
consultation}; advisory, information and consultancy services relating to health and safety, namely, _____ {specify service in class 45, e.g., Security threat analysis for
protecting personal safety}; advisory, information and consultancy services in the field of workplace safety; advisory, information and consultancy services in the field of
workplace safety management relating to employees and contractors; advisory, information and consultancy services on legal regulations related to safety at
work; compilation of legal data and information relating to health and safety in the nature of legal services; legal research services relating to health and safety; legal
services relating to health and safety, including legal services being provided on-line from a computer database, computer network, global computer network, the Internet or other electronic means;
legal services relating to health and safety checks, processes and compliance; legal services relating to compliance with health and safety laws and regulations; reviewing and auditing standards and
practices to assure compliance with health and safety laws and regulations; information, advisory and consultancy services relating to all the aforesaid services
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.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to
broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP
§1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP
§1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may
not exceed the scope of the goods and/or services identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing
In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).
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 44:
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are
classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). 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 44 multiple-class application and how to satisfy the requirements online using the
Trademark Electronic Application System (TEAS) form.
Response Guidelines
If applicant has questions about its application or needs assistance in responding to this Office action,
please telephone 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 refusal(s) and/or requirement(s) 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 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
Yocheved Bechhofer
/Yocheved Bechhofer/
Examining Attorney
Law Office 114
(571) 272-9329
yocheved.bechhofer@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.
