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:  September 06, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the below issue(s).  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 USPTO’s database of registered and pending marks has been searched and no conflicting marks were found that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

·         FOREIGN REGISTRATION CERTIFICATE REQUIRED

·         DISCLAIMER OF "SYSTEM" REQUIRED

·         AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED:

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (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, 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).  

 

DISCLAIMER OF “SYSTEM” REQUIRED:

 

Applicant must disclaim the wording “SYSTEM” because it is not inherently distinctive. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  Specifically, this wording is merely descriptive of a quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

A “disclaimer” is a statement that an applicant does not claim exclusive rights to wording that others may need to use to describe their own goods or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). 

 

The disclaimer mark will not affect the mark’s appearance or remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

The term “system” refers to “a set of connected items or devices that operate together.” See the attached dictionary definition, which can also be found at http://dictionary.cambridge.org/dictionary/american-english/system. In this case, the identification of goods and services indicates that applicant provides various systems, including computer systems combining hardware and software, computer systems integrations services and computer systems analysis. The attached evidence from applicant's website available at http://www.research.ibm.com/ibm-q/system-one/  confirms applicant provides a computing system, see, e.g., “IBM Q System One brings a systems approach to quantum computing” and “IBM is applying the same approach to quantum computing with the first fully integrated universal quantum computing system.”

 

Applicant may satisfy this requirement by submitting the disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SYSTEM” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to submit a disclaimer online using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED:

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SPECIFIED GOODS AND SERVICES

 

The identification for “computer software” in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).   

 

The identifications “computer software for use in controlling the operation and execution of computer systems, programs, and networks; computer software for use in connecting disparate computer networks and systems, computer servers and storage devices; computer operating system software; computer software for linking together computers and for enabling computing across a globally accessible network; computer software for managing hardware, software and processes that exist within an information technology environment, computer systems combining hardware and software for use in management and analysis of data and instructional manuals sold as a unit therewith; cloud computing system, namely, network integrating computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resources; computer systems, namely, computer hardware and computer software for integrating Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses; computer hardware and computer software for quantum computing; computer software for computational analysis of imaging; computer hardware and software relating to security technologies. Computer software for constructing, analyzing, testing, programming and running programs, algorithms, instruction languages, and applications on a quantum computer; computer software for quantum computing; computer hardware for quantum computing; computer software to access a quantum computer; computer software to convert computer code to be read on a quantum computer; computer software to simulate a quantum computer; software for utilizing quantum computers in applications” in International Class 9 are indefinite and must be clarified to specify whether the software format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded software is in International Class 9, whereas providing temporary, online non-downloadable software is a service in International Class 42.  See TMEP §1402.03(d).   Further, with regard to the identification “software relating to security technologies” in International Class 9, applicant must specify the actual purpose or function of the software and its content or field of use, if content- or field- specific. TMEP §§1402.03(d), 1402.11(a). Merely stating the software “relates” to a subject matter is too broad.

 

The identification for “electronic publications” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the publications and could identify publications in International Classes 9 and 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x).  Applicant must amend this identification to clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  In addition, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See TMEP §1402.03(e).  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.  

 

The following are examples of acceptable formats for identifications for electronic publications (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or

 

Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter} in International Class 41. 

 

The wording “user interfaces to control and read-out information from a quantum computer” in International Class 9 is indefinite and must be clarified because the nature of the goods is unclear and because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Applicant must specify the type of user interfaces, using the common commercial or generic name to describe the goods, e.g., keyboards, electric control panel, touchscreens, etc.

 

The wording “printed materials” in International Class 16 of the identification of goods is indefinite and must be clarified to indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications (e.g., information technology).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

The wording “Computer services; computer consultation services; quantum computing services for others; consulting services in the field of quantum computing; consulting services in the field of cognitive computing” in International Class 42 of the identification of services is indefinite and must be clarified because the nature of the services is unclear and because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03. 

Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may adopt the following wording, if accurate. Applicant must fill in the blanks as directed below:

 

CLASS 9:       Computer hardware and ___________ {specify if software is “downloadable” or “recorded”} computer software for ___________ {applicant must indicate the function of the software, such as "word processing, translating data, database management"}; computers; computer servers; computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network; ___________ {specify if software is “downloadable” or “recorded”} computer software for use in controlling the operation and execution of computer systems, programs, and networks; ___________ {specify if software is “downloadable” or “recorded”} computer software for use in connecting disparate computer networks and systems, computer servers and storage devices; ___________ {specify if software is “downloadable” or “recorded”} computer operating system software; ___________ {specify if software is “downloadable” or “recorded”} computer software for linking together computers and for enabling computing across a globally accessible network; ___________ {specify if software is “downloadable” or “recorded”} computer software for managing hardware, software and processes that exist within an information technology environment, computer systems combining hardware and software for use in management and analysis of data and instructional manuals sold as a unit therewith; cloud computing system, namely, network integrating computer hardware and ___________ {specify if software is “downloadable” or “recorded”} software for dynamic provisioning, virtualization, and consumption metering of computer resources; downloadable cloud-computing software for deploying and managing virtual machines to a cloud computing platform; computer systems, namely, computer hardware and ___________ {specify if software is “downloadable” or “recorded”} computer software for integrating Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses; ___________ {specify if the electronic publications are “downloadable” or “recorded of computer media”} electronic publications in the nature of ___________ {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of ___________ {indicate subject matter of publications, e.g., information technology, quantum computing}; computer hardware and ___________ {specify if software is “downloadable” or “recorded”} computer software for quantum computing; ___________ {specify if software is “downloadable” or “recorded”} computer software for computational analysis of imaging; computer hardware and ___________ {specify if software is “downloadable” or “recorded”} software for ___________ {specify actual function or purpose of software, not just what it relates to, e.g., “for use in operating security technologies”}; ___________ {specify if software is “downloadable” or “recorded”} computer software for constructing, analyzing, testing, programming and running programs, algorithms, instruction languages, and applications on a quantum computer; ___________ {specify if software is “downloadable” or “recorded”} computer software for quantum computing; computer hardware for quantum computing; ___________ {specify if software is “downloadable” or “recorded”} computer software to access a quantum computer; ___________ {specify if software is “downloadable” or “recorded”} computer software to convert computer code to be read on a quantum computer; user interfaces, namely, ___________ {specify type of interfaces, e.g., “keyboards, electric control panels, touchscreens”} to control and read-out information from a quantum computer; ___________ {specify if software is “downloadable” or “recorded”} computer software to simulate a quantum computer; ___________ {specify if software is “downloadable” or “recorded”} software for utilizing quantum computers in applications   

 

CLASS 16:     Printed materials, namely, ____________ {specify type of printed materials, e.g., “training materials, educational materials, newsletters, journals”} in the field of _____________ {specify subject matter of printed materials, e.g., “information technology, electronic business transactions via a global computer network, and quantum computing”}; printed materials, namely, books, brochures, informational sheets, instructional manuals, written presentations, instructional and teaching materials, all in the field of computers, computer services, information technology, electronic business transactions via a global computer network, and quantum computing 

 

CLASS 42:     Computer services, namely, ____________ {specify type of computer services, e.g., “computer programming, computer software development, computer systems analysis”}; computer systems integrations services; computer consultation services, namely, ____________ {specify type, e.g., “computer software consulting, cloud computing consulting, computer programming consulting”}; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and computer software problems; computer systems design services for others; computer systems analysis; interconnection of computer hardware and software, namely, integration of computer systems and networks; computer software and hardware testing services, namely, testing of computer software, computers and servers to assure proper functioning; installation, updating and maintenance of computer software; computer programming for others; cloud computing services, namely, network integrated computer hardware and software services for dynamic provisioning, virtualization, and consumption metering of computer resources; consulting services in the field of cloud computing; providing virtual computer systems and virtual computer environments through cloud computing; design and development of computer software for cloud storage of data; computer services, namely, cloud hosting provider services; computer services, namely, electronic data storage and data recovery services; computer software and hardware design for quantum computing; quantum computing services for others, namely, ____________ {specify nature of quantum computing services, e.g., “computing leveraging different physical phenomena, such as superposition, entanglement, and interference to store and process data and information”}; consulting services in the field of quantum computing, namely, ____________ {clarify type of quantum computing consulting, e.g., “computing leveraging different physical phenomena, such as superposition, entanglement, and interference to store and process data and information”}; computer software and hardware design for cognitive computing; consulting services in the field of cognitive computing, namely, ____________ {clarify type of cognitive computing consulting, e.g., “simulating human thought processes in a computerized model”};  

 

ID Manual Available Online

 

For further assistance with identifying and classifying the goods and services, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual (“ID Manual”).  See TMEP §1402.04.

 

Scope Advisory                                                                                    

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the scope of the goods and/or services beyond those in the original application or as later acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods or services may not later be reinserted.  See TMEP §1402.07(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 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  

 

 

 

/Kristin Carlson/

USPTO Trademark Examiner

LO 105

800-786-9199 (Trademark Assistance Center)

571-272-2240

kristin.carlson@uspto.gov

 

 

 

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 September 06, 2019 for

U.S. Trademark Application Serial No. 88468723

 

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. 

 

 

Carlson, Kristin

 

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 September 06, 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.”