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:  August 05, 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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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

 

 

SUMMARY OF ISSUES:

• Amended Identification of Goods and Services Requirement
• Multi-Class Application Requirements

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

Applicant must clarify wording in the identification of goods and services in International Classes 9 and 42 because it is indefinite and too broad in parts and identifies goods in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods and services are, what their purpose or function might be, or the field of use.  More specifically:

 

• The entry of “computer software for individuals and/or coaches to track, analyze, enhance and improve performance data and computer software that provides information for athletic and sports training” must be clarified because, in both instances where software is identified, the entry is overbroad and identifies goods and services in multiple international classes. Applicant must further specify the nature of the software. 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).

 

In addition, it is suggested that applicant clarify that the “computer software for individuals and/or coaches is for use by individuals and coaches.

 

• The entry of “downloadable software in the nature of a mobile application to enable individuals and/or coaches to track, analyze, enhance and improve performance data related to the individuals and mobile application software that provides information for athletic and sports training, such as training videos that can be viewed in the mobile application, and that enables coaches to provide feedback to the individuals that can be viewed in the mobile application” must be clarified because it is overbroad. The second software identified in the entry – “mobile application software that provides information for athletic and sports training, such as training videos that can be viewed in the mobile application, and that enables coaches to provide feedback to the individuals that can be viewed in the mobile application” – must be clarified to identify whether the software is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d). In addition, it is suggested that applicant clarify that first application enables individuals and coaches to perform the functions identified.

 

• The entry of “electronic sports training aid device, namely, computer hardware, software, and wireless sensors for analyzing, measuring, monitoring, tracking, and remotely transmitting data for player swing metrics” must be clarified because the term “software” is overbroad and identifies goods and services in multiple international classes. Applicant must further specify the nature of the software. 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.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

In addition, the term “wireless sensors” performing the functions identified also is indefinite and overbroad. Applicant must clarify that the sensors are not for medical purposes. While sensors for performing the functions identified by applicant that are not for medical purposes are classified in International Class 9, sensors for medical purposes, such as sensors performing biofeedback or for patient monitoring,  are classified in in International Class 10.   A suggestion is made below separately identifying the sensors as not for medical purposes.

 

• The entry of “Software as a service (SAAS)services, namely, computer software for individuals and/or coaches to track, analyze, enhance and improve performance data and computer software that provides information for athletic and sports training” must be clarified because where software is identified, the entry is overbroad and identifies goods and services in multiple international classes. Applicant must further specify the nature of the second software identified in the entry – namely, “computer software that provides information for athletic and sports training.” 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,.  See TMEP §§1402.03(d), 1402.11(a)(xii). Similarly, SAAS services featuring computer software are classified in International Class 42. A suggestion is made below separating the second entry from the first entry.

 

In addition, it is suggested that applicant clarify that first application enables individuals and coaches to perform the functions identified.

 

• The entry of “software as a service services, namely, computer software for individuals and/or coaches to track, analyze, enhance and improve performance data and computer software that provides information for athletic and sports training such as training videos that can be viewed in the mobile application, and that enables coaches to provide feedback to the individuals that can be viewed in the mobile application” must be clarified because, for the same reasons as the entry above, the second software identified in the entry – “software that provides information for athletic and sports training such as training videos that can be viewed in the mobile application, and that enables coaches to provide feedback to the individuals that can be viewed in the mobile application” – is overbroad and identifies goods and services in multiple international classes.  A suggested amendment is made below separating the second entry and identifying it as SAAS services.

 

In several instances, applicant identifies two software entries in the same entry (e.g., “computer software for individuals and/or coaches to track, analyze, enhance and improve performance data and computer software that provides information for athletic and sports training”). Applicant must correct these entries to identify each form of software separately. Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.  In this case, applicant has inserted the term “and” between lists instead of the preferred semi-colon.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant may adopt the following identification, if accurate, suggested changes in bold:

 

International Class 9:

 

Downloadable computer software for use by individuals and coaches to track, analyze, enhance and improve performance data; downloadable computer software for the purpose of providing information for athletic and sports training; downloadable software in the nature of a mobile application to enable individuals and coaches to track, analyze, enhance and improve performance data related to the individuals; downloadable mobile application software that provides information for athletic and sports training and training videos that can be viewed in the mobile application, and that enables coaches to provide feedback to the individuals that can be viewed in the mobile application; downloadable software in the nature of a mobile application  to enable individuals and coaches to track, analyze, enhance and improve performance data based on data collected from body motion sensors, ball movement sensors, club mounted sensors, and force plate sensors; electronic sports training aid device, namely, computer hardware, and downloadable software for the purpose of analyzing, measuring, monitoring, tracking and remotely transmitting data for player swing metrics; electronic wireless sensors for analyzing, measuring, monitoring, tracking, and remotely transmitting data for player swing metrics, not for medical purposes   

 

International Class 42:

 

Software as a service (SAAS) services, featuring computer software platforms for use by individuals and coaches to track, analyze, enhance and improve performance data; Software as a service (SAAS) services featuring computer software that provides information for athletic and sports training; software as a service services featuring computer software for use by individuals and coaches to track, analyze, enhance and improve performance data; Software as a Service (SAAS) services featuring computer software that provides information for athletic and sports training and training videos that can be viewed in the mobile application, and that enables coaches to provide feedback to the individuals, that can be viewed in the mobile application

 

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).

 

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 fees 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 fees sufficient for only 2 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.

 

ASSISTANCE

 

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 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  

 

 

 

 

/Laraine Burrell/

Laraine Burrell

Examining Attorney

Law Office 111

(571)272-8220

Laraine.Burrell@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 August 05, 2019 for

U.S. Trademark Application Serial No. 88423145

 

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. 

 

 

/Laraine Burrell/

/Laraine Burrell/

Laraine Burrell

Examining Attorney

Law Office 111

(571)272-8220

Laraine.Burrell@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 August 05, 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.”