Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  March 17, 2020

 

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

- U.S. Application Serial No(s). 79242449, 79253333, 79253441, 87550899, 88247407, and 88285910

 

Requirement resolved and maintained and continued.  The following refusal to amend the identification of goods is maintained and continued.  See TMEP §713.02.  This requirement will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Applicant’s proposed amendment.  The proposed amendment to the identification of goods is unacceptable for the reasons set forth below.

 

Particular wording in 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 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 as various types of “downloadable software.”  However, the proposed amendment identifies the following goods:  “computer software that enables multiple parties to collaborate virtually over assignments and projects.”  This portion of the proposed amendment is beyond the scope of the original identification because the originally identified goods were limited to software that is downloadable, and the proposed amendment encompasses goods and services that are non-downloadable.

 

Several areas in the proposed identification for applicant’s software are unacceptable because they fail to specify the purpose or function of the software, but instead, merely specify its content or field of use.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Specifically, the following portions of wording in the proposed the identification for applicant’s software, repeated throughout the identification, merely specify the content or field of use rather than the purpose or function:

 

• “for enabling communication, collaboration on projects and exchange of information between users,”
• “for providing numerically based guidance and feedback through algorithmic scoring systems for users,” and
• “for providing users the ability to negotiate rates for job assignments,”
• “for enabling management of the hiring and onboarding process.”

 

Additionally, the wording “software for use the fields of managing and administering” in the identification of goods is indefinite and must be clarified because it is grammatically incorrect and confusing.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Joshua S. Toy/

Trademark Examining Attorney

Law Office 120

571-272-4856

joshua.toy@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 17, 2020 for

U.S. Trademark Application Serial No. 88472492

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Joshua S. Toy/

Trademark Examining Attorney

Law Office 120

571-272-4856

joshua.toy@uspto.gov

 

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).

 

 

 

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.”