Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  August 20, 2019

 

 

 

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

 

Applicant must address issues shown below.  On August 20, 2019, the examining attorney and Anna Manville 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.

 

Applicant’s preliminary amendment containing a signed declaration and foreign registration is acceptable and noted for the record.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must explain whether the letters in the mark “TIPM” have any significance in general or as applied to applicant’s goods and/or services, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

IDENTIFICATION OF GOODS & SERVICES

 

Class 009: All of the software wording is indefinite and must be clarified to indicate that the goods are “recorded” and/or “downloadable” to remain in Class 009.  Also, the wording “computer software, including computer server software” is indefinite due to the word “including” and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  Applicant must also specify the function of the “computer server software,” e.g., for controlling and managing access server applications.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a).  See also 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Class 035: The wording “searching of computer database for others” is properly classified in Class 042 as “searching of computer databases available on computer networks for others.”  Applicant may wish to simply delete this wording instead of transferring to Class 042 as it already has highly similar/duplicative wording in its identification of Class 042 services.

 

Class 041: The wording “education services” is indefinite and requires clarification as to the format, e.g., classes, seminars, etc.  Applicant must indicate that its “arranging and conducting conferences, exhibitions and seminars, relating to business management, computers and computer programs” is indefinite as applicant must specify that these are “for non-business and non-commercial purposes.”  Applicant must also specify the type of publications being published for the “publishing services,” e.g., books, magazines, etc.

 

Class 042: The wording “computer software advisory services” is indefinite and may be replaced by “computer software consultancy services,” if accurate.   The wording “data processing services” is misclassified as this wording is properly classified in Class 035.  The wording “data storage services for others in the field of intellectual property rights” is indefinite and must say “electronic data storage services for others in the field of intellectual property rights.”

 

Class 045: The identification of services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.  Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.

 

Applicant may adopt the following amended identification, if accurate:

 

·       Recorded and downloadable computer software, namely, software for controlling and managing access server applications; recorded and downloadable computer network management software; recorded and downloadable computer utility programs; recorded and downloadable computer software development programs; recorded and downloadable computer security and authentication software for controlling access to and communications with computers; all relating to the searching, monitoring, analysis, management and maintenance of intellectual property rights  [INT. CLASS 009]

 

·       Business management assistance; business research; provision of business information; business information management services, namely, compilation of information into computer databases and systemization of information into computer databases; computerized file management; all relating to the searching, monitoring, analysis, management and maintenance of intellectual property rights  [INT. CLASS 035]

 

·       Education, namely, {SPECIFY format, e.g., classes, workshops, etc.} and training services, relating to business management, computers and computer programs; arranging and conducting conferences, exhibitions and seminars for non-business and non-commercial purposes, relating to business management, computers and computer programs; {SPECIFY by type, e.g., book, magazine, etc.} publishing services; all relating to the searching, monitoring, analysis, management and maintenance of intellectual property rights  [INT. CLASS 041]

 

·       Computer services, namely, computer software design services, computer software consultancy services, computer systems integration services, data processing services, electronic data storage services for others in the field of intellectual property rights; maintaining and designing of computer software for others in the field of intellectual property rights; website planning and building; building and hosting of websites for others; website design consultation; computer programming; electronic data storage; providing computer search engine services in the nature of searching and retrieving information, sites and other resources available on computer networks for others; providing customized computer search engine services which involve searching and retrieving information at customers' specific request via the internet; maintaining of computer databases for others in the field of intellectual property rights all relating to the searching, monitoring, analysis, management and maintenance of intellectual property rights  [INT. CLASS 042]

 

·       Legal support services; intellectual property watching services; legal research; licensing of computer software being legal support services; registration of domain names being legal support services; intellectual property consultancy services; acquiring and maintenance of intellectual property right services which involve provision of searching and investigation services in relation to intellectual property rights, monitoring of deadlines relating to intellectual property rights and attending to payments and collation of documentation in relation to the protection and management of intellectual property; all relating to the searching, monitoring, analysis, management and maintenance of intellectual property rights  [INT. CLASS 045]

 

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.

 

TEAS REDUCED FEE CORRESPONDENCE REQUIREMENTS

 

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.  

 

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. 

 

Note: An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

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

 

 

 

/Toby E. Bulloff/

Examining Attorney

Law Office 119

(571) 270-1531

toby.bulloff@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 August 20, 2019 for

U.S. Trademark Application Serial No. 88443718

 

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. 

 

 

/Toby E. Bulloff/

Examining Attorney

Law Office 119

(571) 270-1531

toby.bulloff@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 20, 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.”