To: | Ometria Ltd. (rhilbert@holleymenker.com) |
Subject: | U.S. Trademark Application Serial No. 88463077 - OMETRIA - 3964.0001 |
Sent: | August 28, 2019 04:02:13 PM |
Sent As: | ecom113@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88463077
Mark: OMETRIA
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Correspondence Address:
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Applicant: Ometria Ltd.
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Reference/Docket No. 3964.0001
Correspondence Email Address: |
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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 28, 2019
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
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).
However, please note the following issues:
FOREIGN CERTIFICATE REQUIRED
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, the 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, the 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 is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. 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), 806.03(h).
ATTORNEY INFORMATION
TRANSLATION INQUIRY
Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following statement: The wording “OMETRIA” has no meaning in a foreign language.
Id.
IDENTIFICATION OF GOODS/SERVICES IN CLASSES 09 AND 35
The goods in Class 09 are described, in part, as “downloadable software and software.”
The services in Class 35 are described, in part, as “Provision of marketing reports and social media campaign reports.”
The wording “software” in the identification of goods is indefinite and must be clarified because it is unclear if the software is downloadable or non-downloadable.
The wording “social media campaign reports” is also indefinite because the purpose or subject of the reports is unclear and this determines their classification.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses.
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.
Applicant may substitute the following wording, if accurate:
Computer software, namely, downloadable software and software for providing retailers with the ability to view transactional, behavioral and profile
data about their customers, to send personalized digital marketing messages, and to report on the results of those messages, all in the fields of market and behavioral research and market and
business intelligence; Computer software, namely, downloadable software and software for creating, using, organizing, editing, storing, sharing, accessing, uploading,
downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence;
Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing
decision, and online behavioral data in Class 09; and
Market research; Advertising services; Marketing services; Business consultancy services; Providing business marketing information; Business advice and commercial information; Business research; Marketing and advertising services, namely, creating digital marketing experiences based on individual customer behavior, buying habits, tastes and profiles and other qualitative and quantitative data for the promotion of retail goods through personalized digital marketing messages and the personalization of websites; Brand concept and brand development services for corporate and individual clients; On-line customer-based social media brand marketing services; Providing marketing consulting in the field of social media; Business data analysis services in the fields of market and behavioral research and market and business intelligence; Providing information, news and commentary in the fields of business and marketing; Provision of marketing reports and social media campaign marketing reports in Class 35
/Ahsen Khan/
Trademark Attorney
United States Patent & Trademark Office
Law Office 113
ahsen.khan@uspto.gov
(571) 272 4343
RESPONSE GUIDANCE