United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/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:  February 10, 2020

 

 

PRIORITY ACTION

 

Applicant must address issues shown below.  On 2/7/2020, the examining attorney and applicant’s attorney, Sarah Ligon, 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.

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on 7/23/2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the identification of services includes services in multiple classes which were not addressed in the prior Office action. Applicant must submit additional fees for the added classes.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

The issue raised in the previous 7/23/2019 Office action is as follows and is maintained:  Section 44 requirement for a true copy of a foreign registration.  Further, the following refusal has been obviated:  Section 2(d) refusal.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Requirement - Multiple-Class Application

•  Requirement - Section 44: Foreign Registration (Maintained and Continued)

 

REQUIREMENT - MULTIPLE-CLASS APPLICATION

 

Section 1(a)

 

The application potentially references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class if the added classes are to be filed under Section 1(a):

 

(1)       List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class 042; and applicant needs a specimen for classes 035, 037, and 045.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

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

 

Section 44

 

The application identifies services in more than one international class; therefore, in the alternative, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44, if the added classes are to be filed under Section 44:

 

(1)       List the 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 services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  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.

 

REQUIREMENT - SECTION 44: FOREIGN REGISTRATION

 

The application specifies both a use in commerce basis under Trademark Act Section 1(a) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(a), 1126(d); 37 C.F.R. §2.34(a)(1), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(a) basis.  See 15 U.S.C. §§1051(a), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each requirement in this Office action. For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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 requirements 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. 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the services are not permitted.  37 C.F.R. §2.71(a).

 

IDENTIFICATION OF SERVICES

 

The identification of services is amended to read as follows: 

 

Class 035: Computer asset management services, namely, asset management of computer hardware in the nature of inventory management

 

Class 037: Computer consulting services, namely, computer consulting related to the installation of computer hardware for creating, managing, and deploying computing infrastructure services for both cloud and on-premise systems; technical consulting services, namely, technical consulting related to the installation of computer hardware for creating, managing, and deploying computing infrastructure services for both cloud and on-premise systems

 

Class 042: Computer services, namely, cloud hosting provider services in the nature of managed public and private cloud hosting for Enterprise Resource Planning (ERP) computer software application management; cloud computing provider services, namely, cloud hosting provider services for storage of customer data; cloud computing featuring Enterprise Resource Planning (ERP) software for database management; infrastructure as a service (IAAS) and platform as a service (PAAS) both featuring Enterprise Resource Planning (ERP) related software platforms for creating, managing, and deploying cloud computing infrastructure services; computer and computer software application consulting services, namely, computer and computer software application consulting related to the research, design, installation, configuration, and optimization and operation of computer hardware and software platforms for creating, managing, and deploying computing infrastructure services for both cloud and on-premise systems; technical consulting services, namely, technical consulting related to the research, design, installation, configuration, and optimization and operation of computer hardware and software platforms for creating, managing, and deploying computing infrastructure services for both cloud and on-premise systems; computer software application consulting services, namely, computer software application consulting related to the installation of computer software platforms for creating, managing, and deploying computing infrastructure services for both cloud and on-premise systems; technical consulting services, namely, technical consulting related to the installation of computer software platforms for creating, managing, and deploying computing infrastructure services for both cloud and on-premise systems; computer diagnostic services; monitoring of computer systems by remote access to ensure proper functioning; monitoring of computer systems for detecting unauthorized access or data breach; monitoring of computer systems to detect breakdowns; preparation, update, installation and maintenance of computer software; technical support services, namely, in the form of troubleshooting in the nature of diagnosing of computer hardware, software and network problems; computer virus protection services; technical support in the form of monitoring the security and technological functioning of global computer network systems; technical support services, namely, providing technical advice for customized application software and Enterprise Resource Planning (ERP) software systems; technical support services, namely, troubleshooting for customized application software and Enterprise Resource Planning (ERP) software systems problems; centralized end user help desk services, namely, providing global services desk for 1st, 2nd and 3rd level technical computer support and computer application support; Computer asset management services, namely, asset management of computer hardware, management of software licenses, desktop management and mobile device management; Integration of computer systems and networks services, namely, integration and implementation of internet of things (IoT) software and computer hardware devices into an Enterprise Resource Planning (ERP) computer network platform; consulting services, namely, consulting services related to the development of business analytics software and business intelligence tools in the nature of software to operate in conjunction with Enterprise Resource Planning (ERP) software and related technological systems

Class 045: Licensing of computer software

 

See TMEP §§1402.01, 1402.01(e).

 

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 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.

 

 

Hansrajh, Keton

/Keton Hansrajh/

Trademark Examining Attorney

Law Office 128

(571) 272-3396

keton.hansrajh@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 February 10, 2020 for

U.S. Trademark Application Serial No. 88427539

 

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. 

 

 

Hansrajh, Keton

/Keton Hansrajh/

Trademark Examining Attorney

Law Office 128

(571) 272-3396

keton.hansrajh@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 February 10, 2020, 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.”