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:  April 25, 2020

 

 

This application was approved for publication on March 8, 2020.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The requirement for an acceptable identification of services is continued and maintained.  Upon further review, applicant must clarify the following wording in the identification of goods and services:

 

Class 9

The wording “downloadable computer software for use in . . .  customer service” and “downloadable software for . . . robotics and AI” in the identification of goods in Class 9 is indefinite because it does not specify clear functions for the software that are sufficiently specific to permit likelihood of confusion determinations.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(d).  Applicant must amend this wording to specify clear functions for the software.

 

Class 35

The wording “advising on, designing, and developing strategies for the transformation of business support services” is indefinite and overbroad as written.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, such wording does not clearly identify business advisory services and business strategy development services, and thus, could identify services in other international classes.  For example, this wording could encompass business technology advising and designing and developing technology strategies for the transformation of business support services in Class 42.  Applicant must clarify the nature of the services and classify them accordingly.

 

Additionally, the wording “business management outsourcing (BMO) services” and “business process outsourcing (BPO) services, namely, outsourcing of business operations, human resources operations in the nature of serving as a human resources department for others, supply chain operations in the nature of supply chain operations management services, customer service operations in the nature of customer service management for others and claims processing in the nature of collecting and analyzing claims data from healthcare and insurance organizations for business purposes” is unclear as to whether such services are outsourcing services or outsource service provider services.  Outsourcing services refers to the arranging of service contracts or procurement of goods for others.  It does not cover services rendered by outsource service providers, which are classified according to the nature/purpose of the services rendered for others. In this case, as written, it is unclear whether the applicant is actually providing “outsourcing” in the nature of arranging of service contracts or procurement of goods or whether the applicant is an “outsource service provider” in the fields of business management (BMO) as well as business operations, human resources operations, supply chain operations, customer service operations, and claims processing in the nature of collecting and analyzing claims data from healthcare and insurance organizations for business purposes,” which, while properly classified in Class 35, is not the same as outsourcing.  Applicant must clarify the nature of the services and classify them accordingly.

 

Class 36

The wording “Finance, accounting, and financial asset management outsourcing services for businesses” is indefinite and confusing as written.  It is unclear as to whether such services are outsourcing services or outsource service provider services.  Outsourcing services refers to the arranging of service contracts or procurement of goods for others.  It does not cover services rendered by outsource service providers, which are classified according to the nature/purpose of the services rendered for others.  In this case, as written, it appears that applicant is an “outsource service provider” in the fields of finance, accounting, and financial asset management.  Applicant must clarify the nature of the services and classify them accordingly.

 

Applicant may substitute the following wording, if accurate: 

 

INTERNATIONAL CLASS 9:  Downloadable computer software for use in medical practice management, database management, managed health care plan management, health care insurance claim and policy adjudicating, health case management, health data profiling, data mining, data base management, data access and reporting, scheduling, decision support systems, general accounting, and exchanging data between different computer operating systems and hardware platforms; downloadable computer software for database management, data storage, data mining, data access and reporting, scheduling, data migration, data administration, and data analysis in the fields of health care, ambulatory care, managed care, life sciences, insurance, and financial services; downloadable computer software for use in business data integration, business data processing, business data analysis, and customer service, namely, {specify function of software, e.g., responding to customer inquiries for others in the field of health care, insurance claims, and medical practice management}; downloadable software for use in omnichannel marketing; downloadable software for enterprise automation, robotics, namely, {specify function of software, e.g., operating medical robots} and AI, namely, {specify function of software, e.g., using artificial intelligence for speech recognition}

 

INTERNATIONAL CLASS 35:  Business consulting and professional business consulting services in the field of business strategy, business initiatives, digital transformation, information technology, finance and accounting; business consulting services in the field of organizational change management; program management, namely, business services in the nature of business process re-engineering services for the implementation, adoption and maintenance of enterprise digital solutions; providing business advice, consulting, and information in the field of marketing, namely, research, evaluations, and analytics related to digital advertising, measuring advertising expenditures, measuring audience participation, and measuring conversion rates; advising on, designing, and developing creative advertising content for digital advertising services; advertising and business advising on the use of AI solutions and data analytics to measure effectiveness of digital advertising campaigns; advertising and business advising and consulting on the purchase and sale of digital media inventory for use in generating ad impressions; providing omnichannel marketing services and marketing strategy; development of business strategy and digital marketing strategy for business; development of eCommerce business strategy; development of platform-based business analytics solutions, namely, business consulting regarding the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions; advising on, designing, and developing business strategies for enterprise automation, robotics and AI; advising on business solutions for information management, namely, providing business information management advice; advising on, designing, and developing business strategies for digitization of services/sales; business data analysis; digital engineering, namely, business process re-engineering services and development of digital business processes; advising on the introduction of new products and sales channels; advising on, designing, and developing strategies for improving customer service and satisfaction; advising on, designing, and developing strategies for the transformation of business support services; business operations management; business advising on the application of intelligent systems to manufacturing and logistics operations, namely, manufacturing strategies and supply chain management; business analysis of business software application portfolios; designing and developing business processes to assist in compliance with regulatory obligations; providing business information via a website; advising on, designing, and developing business strategies for the management of front office, middle office and back office business functions; business process as a service (BPaaS) services featuring supply chain, human resources, marketing, business analytics, and business asset management outsourcing services; quality engineering namely, collection and analysis of quality metric data for business purposes; assurance transformation services, namely, quality management services in the nature of business management services for establishing business quality policy, and determining business means for implementing those policies to improve customer satisfaction; business consulting in the field of user acceptance, automation, performance testing and test data management; business management outsourcing (BMO) services, namely, outsource service provider in the field of business management; business process outsourcing (BPO) services, namely, outsource service provider in the fields of business operations, human resources operations in the nature of serving as a human resources department for others, supply chain operations in the nature of supply chain operations management services, customer service operations in the nature of customer service management for others and claims processing in the nature of collecting and analyzing claims data from healthcare and insurance organizations for business purposes; business consulting and business management services in the fields of blockchain and cryptocurrency; compilation and analysis of business data in the field of blockchain technology and cryptocurrency; outsource service provider in the field of accounting for businesses

 

INTERNATIONAL CLASS 36:  Finance and financial asset management outsourcing services for businesses, namely, outsource service provider in the fields of {specify nature of “finance”, e.g., business finance procurement, business financial management} and financial asset management (delete “accounting” from this class – both outsource service provider services in the field of accounting and outsourcing services in the nature of arranging service contracts for others in the field of accounting are Class 35 services)

 

INTERNATIONAL CLASS 41:  Providing training and education, namely, providing seminars, coaching, and non-downloadable webinars in the field of information technology

 

INTERNATIONAL CLASS 42:  Information technology consulting services; providing technology information, namely, developing digital solutions in the nature of digital software platforms for the purpose of improving business management, revenue growth, operational and administrative efficiency, costs, customer service, and compliance with regulations; design and development of computer hardware and software; developing IT infrastructure solutions for the purpose of improving business management, revenue growth, operational and administrative efficiency, costs, customer service, and compliance with regulations; technical consulting services in the design and implementation of computer-based information systems for healthcare organizations; designing and developing digital solutions in the nature of digital software platforms for business information management; development, implementation and technical support, namely, troubleshooting of computer software problems, of proprietary and third-party software products; designing and developing artificial intelligence solutions to measure effectiveness of digital advertising campaigns; technical consulting services in the field of design and development of infrastructure processes in the nature of information technology (IT) infrastructure processes and engineering processes; technical consulting services in the field of cloud computing solutions, evaluation and implementation of internet technology and services in the nature of quality evaluation and implementation of information technology (IT) and internet access software services; consulting in computer hardware and computer software development; design, development, implementation and configuration of computer software, computer hardware and IT infrastructure; scientific and technological services, namely, research and design in the field of computer datacenter architecture; developing and managing application software for portfolio analysis; design and development of pre-configured and integrated business technology and software to aggregate, analyze and integrate customer information for the purpose of business data integration, business data processing, business data analysis, and customer service; computer systems implementation and integration services; computer software testing services, namely, testing of integrations, systems, infrastructure, packages, performance and data management; computer technology support services, namely, monitoring technological functions of computer network systems and help desk services; providing computer security information consulting; providing on-line non-downloadable software for computer security; providing on-line non-downloadable software tools for the development of computer security software; platform as a service (PaaS) services featuring computer software platforms for use by others as a pre-configured and integrated business technology for management of enterprise applications, custom applications, or development and test environments; outsource service providers in the field of information technology; Software as a service (SaaS), featuring computer software for transition management in the field of application maintenance, platforms for data acquisition, ingestion, transformation, aggregation and data science in the field of data and enterprise information management for the purposes of business transformation, business discovery, business agility, and business reliability and customer acquisition and servicing of customer insurance policies in the field of insurance; industry-specific technology solutions, namely, providing on-line non-downloadable software and computer systems integration services for clinical data management, pharmacovigilance, equity research support, commercial operations, and order management; software as a service (SaaS) services, namely, hosting software for use by others as pre-configured and integrated technology platforms to solve specific business problems; providing on-line non-downloadable software featuring artificial intelligence for conducting advanced product research, analyzing data, and assessing insurance claims; software as a service (SaaS) services featuring software for database management, data storage, data mining, data access and reporting, scheduling, data migration, data administration, and data analysis using artificial intelligence and machine learning algorithms; platform as a service (PaaS) services featuring computer software platform for the hosting and distribution of artificial intelligence algorithms and related software applications; infrastructure as a service (IaaS) services, namely, providing virtualized computing resources in the nature of virtual computer systems and virtual computer environments through cloud computing over the internet; technology consulting services in the fields of blockchain and cryptocurrency; advising on, designing, and developing mobile computing platforms to support field sales

 

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 references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or 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 fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least five classes; and  applicant submitted fees sufficient for only five classes.  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(es) 9, 35, 36, 41 and 42; applicant needs a specimen for any additional classes.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

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

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

 

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 April 25, 2020 for

U.S. Trademark Application Serial No. 88427743

 

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. 

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

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 April 25, 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.”