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 11, 2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Search Of Office’s Database Of Marks
• Amendment Of The Identification Of Goods And Services Required
• Clarification Of The Number Of Classes For Which Registration Is Sought Required
• Multiple Class Application Requirements
• Section 44 Filing Basis – Foreign Registration Or Amendment Of Filing Basis Required

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

AMENDMENT OF THE IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The applicant provided the following identification of goods and services:

 

Class 35 -

Assistance in the management of business and enterprise operation, business assistance, management, and administration services; consultancy and advisory services; business efficiency expert services; business direction and organization consultancy; professional business management consultancy; business statistical information services; provision of business information through websites; economic information services for business; business analysis, research, and information services; business management consultancy services in the field of information technology; business information services rendered online from a world wide web or over the internet; production of statistics; systemization of information into computer databases

Class 42 -

Software design, development, and programming; development of systems and technology based on artificial intelligence and internet of things; professional consultancy services related to computer software; technical consultancy related to computer software installation, maintenance, application, and use; information and consultancy services in relation to software design, programming, and maintenance; consultancy services in relation to computer networks with mixed program environments; IT security consultancy services; conversion of data and computer programs, not physical conversion; electronic data storage computer services; data electronic storage and backup services; provision of information in relation to computer technology and programming via web sites; software installation; software installation and maintenance; software installation, maintenance, update, and modernization; monitoring of computer systems by remote access; research and development of new products for others; update and maintenance of computer programs and software; information technology outsourcing services; technology consultancy services; technology outsourcing services; software update and upgrade; computer software program update for others; software database update; software update in relation to computer risk prevention and security; update of computer programs

 

Class 35

 

The wording “consultancy and advisory services” in the identification of services is indefinite and overly broad and must be clarified because the subject matter or fields in which that applicant is providing the advisory services is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Moreover, the wording could identify consulting and advisory services that are classified in multiple international classes.  For example, business management consulting services would be classified in Class 35, while building construction consulting services are in Class 37, physical fitness education consulting services are in Class 41, and health care consulting would be in Class 44.  Therefore, the applicant must amend the identification to clarify the exact kind of consultancy and advisory services that the applicant intends to provide, as well as classify those goods in the correct international Class. 

 

The wording “economic information services for business” in the identification of services is indefinite and must be clarified because it is not clear what services are being provided by the applicant.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The wording does not make it clear if the applicant is merely providing information in the field of economics, or if the applicant is intending to provide some other service that would be an economic information service

The wording “business…research” in the identification of “business analysis, research, and information services” is indefinite and must be clarified because the exact kind of business research services or the subject matter of the business research services is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must amend the identification to clarify the type of business research to be provided.

 

The wording “production of statistics” in the identification of services is indefinite and overly broad and must be clarified because the exact services being provided is not clear and the purpose for the service is not clear as well.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Moreover, the wording could identify statistics production services in other classes.  For example, “Compiling and analyzing statistical health data in order to uncover and identify health care fraud and claims errors” is classified in Class 45 and “compiling and analyzing statistics for financial purposes” is classified in Class 36.  Therefore, the applicant must clarify the exact statistics services that the applicant is providing and classify those services in the correct international class. 

 

Based upon the nature of the services identified by the applicant, as well as the information available on the applicant’s website, the examining attorney is only offering recommended amendments to the identification of services in Classes 35 and 42.  See http://www.adaptio.com.ar/#features.  However, if the applicant wishes to identify the provision o services in other classes, the applicant must follow the multiple class application requirements below. 

 

Class 42

 

The wording “development of systems and technology based on artificial intelligence and internet of things” in the identification of services is indefinite and must be clarified because it is not clear form the identification what king of technology or systems are being developed.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must amend the identification to clarify the exact kinf of systems or technology that that the applicant is developing in Class 42.

 

The wording “monitoring of computer systems by remote access” in the identification of services is indefinite and must be clarified because the identification does not specify the reason for the monitoring of the computer system.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, the applicant must amend the identification to clarify the purpose for the monitoring. 

 

The wording “technology consultancy services” in the identification of services is indefinite and must be clarified because the identification does not indicate that kind of technology that the applicant is providing the services about or the field in which the applicant is providing the consulting.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “technology outsourcing services” in the identification of services is indefinite and must be clarified because the identification does not indicate the type of technology that the applicant is providing the outsourcing for or the fields in which the applicant is providing technology outsourcing for.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

 The wording “software database update” in the identification of services is indefinite and must be clarified because the identification does not specify that the applicant is updating a software database system.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The applicant may amend the identification of goods and services to the following, if accurate:

 

Class 35 -

Assistance in the management of business and enterprise operation, business assistance, management, and administration services; consultancy and advisory services in the field of {applicant to clarify the subject matter of the consultancy services  in Class 35, e.g. business management, etc.}; business efficiency expert services; business direction and organization consultancy; professional business management consultancy; providing business statistical information services; provision of business information through websites; economic information services for business, namely, {applicant to clarify the information services being provided, e.g. providing information in the field of economics, etc.}; business analysis, business market research, and business information services; business management consultancy services in the field of information technology; business information services rendered online from a world wide web or over the internet; production of statistics, namely, {applicant to clarify the statistics services to be offered, e.g. compilation of statistics for business or commercial purposes, etc.}; systemization of information into computer databases

Class 42 -

Software design, development, and programming; development of systems and technology based on artificial intelligence and internet of things, namely, {applicant to clarify the systems and technology to be developed by the applicant in class 42, e.g. development of online computer software systems, etc.}; professional consultancy services related to computer software; technical consultancy related to computer software installation, maintenance, application, and use; information and consultancy services in relation to software design, programming, and maintenance; consultancy services in relation to computer networks with mixed program environments; IT security consultancy services; conversion of data and computer programs, not physical conversion; electronic data storage computer services; data electronic storage and backup services; provision of information in relation to computer technology and programming via web sites; software installation; software installation and maintenance; software installation, maintenance, update, and modernization; monitoring of computer systems by remote access, namely, {applicant to clarify the purpose or use of the computer monitoring service in Class 42, e.g. Computer monitoring service which tracks application software performance, performs periodic maintenance and provides reports and alerts concerning such performance, etc.}; research and development of new products for others; update and maintenance of computer programs and software; information technology outsourcing services; computer technology consultancy services; information technology outsourcing services; software update and upgrade; computer software program update for others; software database system update services; software update in relation to computer risk prevention and security; update of computer programs; consultancy and advisory services in the field of information technology design and development

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED

 

The application identifies services that could be classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

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.

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that could be classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es).  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

SECTION 44 FILING BASIS – FOREIGN REGISTRATION OR AMENDMENT OF FILING BASIS REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(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, an 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, 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 has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  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), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

RESPONSE GUIDELINES

 

Response guidelines.  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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/Mark S. Tratos/

Mark S. Tratos

Trademark Examining Attorney

Law Office 113

(571) 270-3575

Mark.Tratos@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 11, 2019 for

U.S. Trademark Application Serial No. 88475904

 

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. 

 

 

/Mark S. Tratos/

Mark S. Tratos

Trademark Examining Attorney

Law Office 113

(571) 270-3575

Mark.Tratos@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 11, 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.”