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: February 19, 2020
INTRODUCTION
This Office action is in response to applicant’s communication filed on Jan. 28, 2020.
In a previous Office action(s) dated Aug. 15, 2019, the trademark examining
attorney identified the following issues:
- Specimen refusal for class 35
- Requirement to disclaim “CLOUD”
- Requirement to clarify the identification of services in class 42
- Requirement to amend the mark description
Based on applicant’s response, the trademark examining attorney notes that the following requirements are satisfied:
- Specimen refusal for class 35 (applicant deleted class 35)
- Disclaimer requirement (applicant has disclaimed “CLOUD”)
- Requirement to amend the mark (mark description has been amended)
See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s)
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:
- Requirement to amend identification of services in class 42
IDENTIFICATION OF SERVICES
THE REQUIREMENT APPLIES ONLY TO THE SERVICES IDENTIFIED HEREIN
Applicant must clarify the wording, noted below, in the identification of goods and/or services in
International Class(es) 42 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This
wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international
class.
The wording “technical support services” is indefinite because the type or nature of the services are unclear.
Further, it is broad because it may include services in other classes (e.g., class 37 for hardware repair; class 40 for manufacture of goods; class 42 for diagnosing technological or software
issues).
Please clarify “infrastructure” as this is indefinite and it may include services in other classes (e.g., relating to IT infrastructure is in class
42, construction of infrastructure facilities is in class 37, and access to telecommunication infrastructure is in class 38).
Please consider amending “computer security services, namely, identification of cyber threats through multi-source threat intelligence and analysis,
development of mitigation strategies to minimize risk of computer system infection and data exfiltration, remote configuration of pre-integrated security tools to protect computer software and
electronic data from computer viruses and cyber security threats, and infrastructure and security tool notification and configuration to return infrastructure to compliant state, all of the foregoing
being in the nature of computer security consultancy relating to computer data, programming, equipment and software” to ensure that the services are consistent with class 42 technological
services. For example, with respect to returning “infrastructure to compliant state”, it is suggested to indicate that applicant is returning the IT infrastructure
to a secure state (otherwise, “compliance” may indicate testing to ensure compliance with industry standards in class 42, regulatory compliance in class 45, etc.).
Also, applicant must clarify its computer security consultancy regarding “equipment” as this may include other classes (e.g., maintenance and repair of equipment in class 37, protection of personal
property in class 45, diagnosing problems with equipment in class 37, etc.)
The wording “regulatory and compliance assistance for quality control purposes” requires amendment because “regulatory” service are generally in class
45 (as it relates to the law).
The wording “policy and procedure review in the nature of computer security consultancy” also requires clarification because the type or nature of the
services are unclear. This is also broad because “policy and procedure review” may include services in other classes (e.g., public policy in class 35, review of
business practices in class 35, regulatory or legal policies in class 45, etc.). Amendments are suggested below consistent with class 42 services.
The services “related technical support in the nature of help desk services for IT infrastructure, operating systems, database systems, and web
applications” is indefinite because the type or nature of services are unclear; also, this may include services in other classes (e.g., technical services for the repair of hardware in class 37, or
diagnosing problems with hardware in class 42).
The services for “technical consulting, computer system analysis, technical advice, help desk services support, and managed computer security
consultancy services in the fields of computer security, Internet security, data security, cybersecurity, information technology, computer systems, virtualization technologies, cloud computing and
computing solutions and systems, and network architecture, all of the foregoing in the nature of consulting in the field of information technology and internet security” requires additional
clarification. The inclusion of “all of the foregoing in the nature of consulting in the fiend of information technology and internet security” is insufficient to
clarify the type or nature of the services. For example, technical consulting and technical advice is classified according to the field or subject matter (e.g.,
repair of computer hardware in class 37, or diagnosing problems with computer hardware in class 42). Suggestions consistent with services in class 42 have been
provided below.
Finally, please remove reference to “providing virtual IT support staff services for businesses” because this is indefinite and broad as it may
include support staff services in class 35 (compared to computer technical support services in the nature of help desk services in class 42).
Applicant may adopt the following, if accurate:
Class 42
- administering and maintaining databases and virtual computing environments for others, namely, development, updating and maintenance of software and
database systems, technical support services by troubleshooting in the nature of diagnosing computer hardware and software problems, and providing virtual computer systems and virtual computer
environments through cloud computing
- technical support services in the nature of installation, administration, and troubleshooting of web and database applications
- application service provider (ASP), namely, hosting computer software applications and maintenance of online databases of others, electronic storage
services for archiving databases, and rental of a database server to third parties
- cloud computing featuring software for use in providing virtual computer environments for software-as-a-service (SaaS), infrastructure-as-a-service
(IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS) functions
- cloud hosting of electronic databases and virtual computing environments, namely, cloud hosting provider services
- cloud-based network services providing network connectivity and management, security, continuity and productivity enhancements, namely, network
analysis, computer network design, wireless engineering, virtualization, computer project management, computer network configuration services, technical support services by troubleshooting in the
nature of diagnosing computer hardware and software problems, and computer security services, namely, restricting unauthorized access to hard drives, computer networks and websites
- computer security services, namely, identification of cyber threats through multi-source computer security threat intelligence and analysis,
development of mitigation strategies to minimize risk of computer system infection and data exfiltration, remote configuration of pre-integrated security tools to protect computer software and
electronic data from computer viruses and cyber security threats, and IT infrastructure and security tool notification and configuration to reinstate computer security to IT
infrastructure, all of the foregoing being in the nature of computer security consultancy relating to computer data, programming, diagnosis of problems with equipment and software
- cloud computing featuring software for computer services, namely, providing desktop-as-a-service (DaaS) and virtual servers to others
- Technology consulting and providing technological information in the fields of information technology, cloud computing, web services, software,
software-as-a-service (SaaS), data processing and analytics, data storage, data warehousing, data archiving, data and information security, networking, mobile computing, and the Internet of Things
(IoT)
- hosting the software, websites and other computer applications of others on a virtual private server
- IT security services, namely, computer security risk assessments, computer network vulnerability assessments and testing to assess
information security vulnerability, penetration testing of computers to assess information security vulnerability, computer network architecture review and design, quality control and
evaluation of computer networks, computer security consultancy, Service Organization Controls (SOC) cybersecurity technological reports, and testing of Payment Card Industry (PCI) to
ensure compliance with industry standards, testing, analysis, and evaluation of computer networks to assure compliance with industry standards, all of the foregoing in the nature
of computer security consultancy
- providing virtual computer systems and virtual computer environments through cloud computing
- software-as-a-service (SaaS), infrastructure-as-a-service (IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS) featuring computer
software for managing virtual desktop environments, data storage and backup, database management, cloud computing, accounting and bookkeeping, data protection and security, monitoring cloud and
application performance, cloud infrastructure management and automation, virtualization, networking, user authentication, Software Defined Networking (SDN), remote access, remote support, data
sharing, and data, desktop and application streaming
- software-as-a-service (SaaS), infrastructure-as-a-service (IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS) featuring computer
software platforms for the protection and defense against and response to data, computer network, and cyber breaches, cyber threats, and cyber invasions, and related technical support
in the nature of help desk services for diagnosing problems with IT infrastructure, operating systems, database systems, and web applications
- consulting in the field of information technology and internet security relating to computer security, Internet security, data security,
cybersecurity, information technology, diagnosing problems with computer systems, computer virtualization technologies, and design and development of cloud computing
software, computing IT systems, and computer network architecture
- computer services, namely, remote management of the information technology (IT) systems of others
- planning, design and management of information technology systems
- providing virtual IT technical support services, namely, 24/7 service desk or help desk services for IT infrastructure, operating systems,
database systems, and web applications
Scope. 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).
ID Manual. 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.
RESPONSE GUIDELINES
If applicant does not timely respond within six months of the issue date of this final Office action, the
following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:
- administering and maintaining databases and virtual computing environments for others, namely, development, updating and
maintenance of software and database systems, technical support services, and providing virtual computer systems and virtual computer environments through cloud computing
- cloud-based network services providing network connectivity and management, security, continuity and productivity enhancements,
namely, network analysis, computer network design, wireless engineering, virtualization, computer project management, computer network configuration services, technical support services, and computer
security services, namely, restricting unauthorized access to hard drives, computer networks and websites
- computer security services, namely, identification of cyber threats through multi-source threat intelligence and analysis,
development of mitigation strategies to minimize risk of computer system infection and data exfiltration, remote configuration of pre-integrated security tools to protect computer software and
electronic data from computer viruses and cyber security threats, and infrastructure and security tool notification and configuration to return infrastructure to compliant state, all of the foregoing
being in the nature of computer security consultancy relating to computer data, programming, equipment and software
- IT security services, namely, IT security risk assessments, network vulnerability assessments and testing to assess information
security vulnerability, penetration testing of computers to assess information security vulnerability, network architecture review and design, regulatory and compliance assistance for quality control
purposes, policy and procedure review in the nature of computer security consultancy, Service Organization Controls (SOC) cybersecurity technological reports, and Payment Card Industry (PCI)
compliance testing, assessment and planning to assure compliance with industry standards, all of the foregoing in the nature of computer security consultancy
- software-as-a-service (SaaS), infrastructure-as-a-service (IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS)
featuring computer software platforms for the protection and defense against and response to data, computer network, and cyber breaches, threats, and invasions, and related technical support in the
nature of help desk services for IT infrastructure, operating systems, database systems, and web applications
- computer services, namely, remote management of the information technology (IT) systems of others
- planning, design and management of information technology systems
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
In such case, the application will proceed for the following services only:
- technical support services in the nature of installation, administration, and troubleshooting of web and database
applications
- application service provider (ASP), namely, hosting computer software applications and maintenance of online databases of
others, electronic storage services for archiving databases, and rental of a database server to third parties
- cloud computing featuring software for use in providing virtual computer environments for software-as-a-service (SaaS),
infrastructure-as-a-service (IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS) functions
- cloud hosting of electronic databases and virtual computing environments, namely, cloud hosting provider
services
- cloud computing featuring software for computer services, namely, providing desktop-as-a-service (DaaS) and virtual servers to
others
- Technology consulting and providing technological information in the fields of information technology, cloud computing, web
services, software, software-as-a-service (SaaS), data processing and analytics, data storage, data warehousing, data archiving, data and information security, networking, mobile computing, and the
Internet of Things (IoT)
- hosting the software, websites and other computer applications of others on a virtual private server
- providing virtual computer systems and virtual computer environments through cloud computing
- software-as-a-service (SaaS), infrastructure-as-a-service (IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS)
featuring computer software for managing virtual desktop environments, data storage and backup, database management, cloud computing, accounting and bookkeeping, data protection and security,
monitoring cloud and application performance, cloud infrastructure management and automation, virtualization, networking, user authentication, Software Defined Networking (SDN), remote access, remote
support, data sharing, and data, desktop and application streaming
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding
requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing
fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
How to respond. Click to file a request for reconsideration of this final Office action that
fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Jeane Yoo/
Examining Attorney
Law Office 120
(571) 272-5021
Jeane.Yoo@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.