To: | Twilio Inc. (trademarks@cobaltlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88470670 - TALKNOLOGY - TALKNOLOGY42 |
Sent: | 7/1/2019 4:01:23 PM |
Sent As: | ECOM127@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88470670
MARK: TALKNOLOGY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Twilio Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 7/1/2019
This Office action is supplemental to and supersedes the previous Office action issued on 7/1/2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, the identification of services must be further amended because it contains an improperly classified entry for “voice over internet protocol (VOIP) services”.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office action dated 7/1/2019. The issues raised in the previous 7/1/2019 Office action are as follows and are maintained: a requirement to amend the identification of goods and services and follow the multiple-class application requirements, if applicable.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Amended Identification Of Goods And Services Required
• Multiple-Class Application Requirements
Applicant must respond to all issues raised in this Office action and the previous 7/1/2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The requirements to amend the identification of goods and services discussed in the previously issued Office action from 7/1/2019 are maintained. In addition, “voice over internet protocol (VOIP) services” are classified incorrectly. Applicant must amend the application to classify the services in International Class 38. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Applicant may adopt the following identification, with changes highlighted in bold, if accurate:
Class 9 [new class] – “Downloadable telecommunication and telephony software for use in computerized telephony applications”; and
Class 38 – [new class] – “Voice over internet protocol (VOIP) services; communication services, namely, transmission of data from cloud networks for telecommunications networks via the Internet; transmission of electronic mail and electronic messaging services; delivery of messages by electronic transmission for others; computerized telephony services; and
Class 42 – “Application service provider featuring application programming interface (API) software and software development tools for use in enabling cloud communication services; platform as a service (PAAS) featuring application programming interface (API) software and software development tools for cloud communication services; software as a service (SAAS) services featuring software for electronic mail and digital messaging; voice over internet protocol (VOIP) services; cloud computing featuring software for use in transmitting data from cloud networks for telecommunications networks; providing temporary use of on-line non-downloadable cloud computing software for use in transmitting data from cloud networks for telecommunications networks; electronic mail time-stamping and authentication services; computer services, namely, redirecting electronic mail and messages to changes personal electronic address; providing temporary use of online non-downloadable telecommunications software for computerized telephony services”
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 should note the following additional requirement.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action.
/Evonne M. Neptune/
Trademark Examining Attorney, Law Office 127
United States Patent and Trademark Office
(571) 270-1740
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.