Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 22, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 7/1/2019.

 

In a previous Office actions dated 7/1/2019, applicant was required to satisfy the following requirement(s):  amend the identification of goods and services and satisfy the multiple-class application requirements, if applicable.

 

The trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Amended Identification Of Goods And Services Required
• Multiple-Class Application Requirements

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

All Requirements Included with the July 1, 2019 Office Actions are Continued and Maintained.

 

Applicant was previously required to clarify the identification of goods and services in International Class 42 because the wording is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

In addition, applicant was previously required to reclassify “downloadable telecommunication and telephony software for use in computerized telephony applications” and “delivery of messages by electronic transmission for others; computerized telephony services” in International Classes 9 and 38, respectively.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant responded by amending the identification to delete all the originally filed goods and services and add new services.  The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and services as follows: 

 

“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 communication services, namely, transmission of data from cloud networks for telecommunications networks; electronic mail and messaging services and delivery of messages by electronic transmission for others; computerized telephony services; Providing temporary use of online nondownloadable telecommunications software for computerized telephony services; Downloadable telecommunication and telephony software for use in computerized telephony applications” in Class 42.

 

However, the proposed amendment identifies the following services: 

 

“Providing temporary use of on-line non-downloadable software for course resource services, namely, creation of, access to, and management of course resource lists including all material types; Providing temporary use of on-line non-downloadable software for obtaining copyright clearance from licensors for use of materials on course resources lists” in Class 42.

 

This proposed amendment is beyond the scope of the original identification because the new services are unrelated to the previously filed acceptable goods and services.  First, based on the originally filed identification, only the following entries are acceptable:

 

“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; Providing temporary use of online nondownloadable telecommunications software for computerized telephony services”.

 

The first two entries feature application programming interface (“API”), which is a software containing a set of subroutine definitions and protocols, used by computer programmers to build other software.  See http://en.wikipedia.org/wiki/Application_programming_interface.  The proposed amendments feature software much broader than API software because it is not specified for use by computer programmers. 

 

Next, the proposed amendments do not appear related to applicant’s original “software as a service (SAAS) services featuring software for electronic mail and digital messaging” and “providing temporary use of online nondownloadable telecommunications software for computerized telephony services”.  Specifically, the amendments feature software for creating, accessing, and managing course resource lists, and for obtaining copyright clearance from licensors.  It is not clear from the application that this is related to electronic mail, digital messaging and computerized telephony services.  Moreover, the provision of temporary, non-downloadable software is distinct from software as a service services because the latter features hosting of third-party software.  Here, applicant’s identification does not indicate that the services are performed for others.  Thus, the proposed amendments are unrelated to the original acceptable identification. 

 

Applicant may respond by amend the original identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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.

 

Applicant should note the following additional requirement.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The original 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 fees 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.

 

Filing Fees For Added Classes

 

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.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

evonne.neptune@uspto.gov

 

ADDITIONAL 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 July 22, 2019 for

U.S. Trademark Application Serial No. 88470670

 

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. 

 

 

Evonne Neptune

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

 

 

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 July 22, 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.”