To: | Cerberus Cyber Protection, Inc (richard@4trademark.com) |
Subject: | U.S. Trademark Application Serial No. 88443478 - DIGIGUARD - N/A |
Sent: | August 19, 2019 09:47:49 AM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88443478
Mark: DIGIGUARD
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Correspondence Address: |
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Applicant: Cerberus Cyber Protection, Inc
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 19, 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 Results
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).
However, the applicant must address the identification requirement detailed below.
Requirement – Identification
All identifications must be precise and identify the services with particularity using common or commercial names for the services. TMEP §1402.01.
Current Identification
Applicant’s current identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):
International Class 042: Consulting in the field of information technology and computer security; technological consultation in the technology field of enterprise information technology; consulting in the fields of cyber security and information assurance, enterprise information technology, and development of secure infrastructure; computer systems engineering, simulation, analysis, and administration for others; computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability.
The identification is unacceptable as presently worded because certain services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
Specifically, applicant must clarify what “information assurance” entails and detail what type of infrastructure is being developed.
Suggested Amendment
Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):
International Class 042: Consulting in the field of information technology and computer security; technological consultation in the technology field of enterprise information technology; consulting in the fields of cyber security and information assurance in the nature of data security; consulting in the fields of enterprise information technology, and development of secure _______ {specify type of infrastructure, e.g., computer network} infrastructure; computer systems engineering, simulation, analysis, and administration for others; computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability.
Limitation on Amendments
While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
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.
Response Guidelines
If applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application: “consulting in the fields of cyber security and information assurance, enterprise information technology, and development of secure infrastructure.” The application will then proceed with the following services only:
International Class 042: Consulting in the field of information technology and computer security; technological consultation in the technology field of enterprise information technology; computer systems engineering, simulation, analysis, and administration for others; computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability.
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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
/Andrea Hack/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 108
571-272-5413 (ph.)
andrea.hack@uspto.gov
RESPONSE GUIDANCE