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 12, 2019

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

 

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant must rewrite the identification of goods and services in its entirety because of the nature and extent of the amendments required.  37 C.F.R. §2.74(a).  The examining attorney has provided suggested amendments below.

 

The identification for software and software applications in  Class 009 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

 

 

Applicant may adopt the following wording, if accurate: 

 

Downloadable computer software platforms for {indicate purpose of the platforms, e.g., application development}; Downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., for use in financial modeling}; Downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., evaluating jobs and benefit plans, creating and maintaining employee pay structures, evaluating employee performance, conducting data analysis to develop fair base pay programs, and for modeling, recording, organizing, calculating, reporting, displaying, analyzing, predicting, and updating actuarial data, financial data, business data, and human resources data}, all for use in the fields of human resources, employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration, financial planning, personnel management, workforce effectiveness, and rewards management; Downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., for benefit plan selection and utilization decision support} for employees, job candidates, employee family members, managers, retirees, other alumni, HR and other HR consumers; Downloadable software in the nature of a mobile application to{specify the function of the programs, e.g., aggregate health plans, financial plans, talent programs and work experience services across the digital workplace for employees, job candidates, employee family members, managers, retirees, other alumni, HR and other HR consumers}; Downloadable software in the nature of a mobile application that {specify the function of the programs, e.g., leverages artificial intelligence to drive targeted messaging through mobile notifications, email, SMS and online action items for employees, job candidates, employee family members, managers, retirees, other alumni, HR and other HR consumers}; Downloadable software in the nature of a mobile application {specify the function of the programs, e.g., that uses natural language processing to interact with employees, job candidates, employee family members, managers, retirees, other alumni, HR and other HR consumers}; Downloadable software in the nature of a mobile application {specify the function of the programs, e.g., that delivers mobile application services for employees, job candidates, employee family members, managers, retirees, other alumni, HR and other HR consumers}; Downloadable software in the nature of a mobile application for use in providing  {specify the nature and function of the programs, e.g., health and welfare, defined benefit, defined contribution, share plan and wellness incentive administration services for employees, job candidates, employee family members, managers, retirees, other alumni, HR and other HR consumers}; Downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., use in risk management, risk evaluation and strategic planning, data analysis, data computation and data organization}; Downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., providing engagement analytic services related to health plan, financial plan, talent programs selection; Software [indicate whether downloadable or recorded] permitting download of electronic publications in the nature of periodicals, newsletters, reports, articles, guides, manuals, personnel policies, administrative forms and directories in the fields of human resources, employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration, financial planning, personnel management, workforce effectiveness, rewards management, employee job evaluation, employer-employee communications, finance and administration, actuarial matters, and governmental and regulatory communications; Downloadable software in the nature of a mobile application use in automation of tasks, creation of prediction models, and identifying inefficiencies in business models in Class 009.

 

Class 016 is accepted.

 

The wording in the identification of services for Classes 035 and 036 must also be clarified because some of it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, “[h]ealthcare plan audit services” in Class 036 is overbroad.  Auditing of insurance plans and/or account auditing services are in Class 035.

 

Applicant may substitute the following wording, if accurate: 

 

Business process management services in the field of [specify; e.g., human resources, employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration, financial planning, personnel management, workforce effectiveness, rewards management, employee job evaluation, and actuarial matters] namely, business administration and business management of[specify; e.g., pension and retirement plans, insurance, health care plans, dental plans, prescription plans]; Business consultation services; Business risk management services; Data collection and providing analysis of business data, and administration of plans, all in the fields of human resources, employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration, financial planning, personnel management, workforce effectiveness, rewards management, employee job evaluation, and actuarial matters; Custom preparation of administrative forms, business reports, employer-employee communications materials, payment processes, market reports and studies, and governmental and regulatory communications and compilation of information into computerized databases, all in the fields of human resources, employee compensation and benefits, pension and retirement planning, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration, financial planning, personnel management, and actuarial matters; Conducting marketing research services and studies in the fields of employee benefits and global compensation programs; Management of telephone call centers for others; operation of customer service interaction telephone call centers for others; Employee relations information services; employment counseling and recruitment services; Providing healthcare cost containment services for employers and their employees, namely providing information and advice regarding the pricing and selection of healthcare plans, cost and quality comparison of healthcare plans, healthcare vendor selection and management, healthcare program design, crafting annual audit strategy, and management of pharmacy benefits in Class 035.

 

Advisory, technology, and administration solutions in the nature of [specify common commercial name of activity classified in Class 036; e.g.,  financial advice and consultancy ]in the fields of human resources, healthcare, insurance and wealth management; Financial consulting services, namely financial planning, budgeting, forecasting and reporting, and enterprise cost-reduction; Financial risk management services namely insurance portfolio analysis and strategy for optimization; actuarial services; actuarial consulting; Financial advisory and consulting services in relation to insurance, employee compensation and financial benefits, employee benefits plans, pension and financial retirement plans, employee health care and prescription insurance plans; Administration and management of employee benefits plans concerning insurance and finance, namely health insurance benefits, dental insurance benefits, retirement benefits, employee welfare benefits; Financial research and information services; enterprise risk management services; Financial services, namely, data compilation and analysis services in the fields of employee benefits, human capital management, employee compensation, information systems and business process management; Financial monitoring services in the nature of monitoring healthcare vendor markets for investment purposes in Class 036.

 

The identification for educational services  in Class 041 requires further specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the the subject matter or field of the identified workshops, seminars, leadership briefings, information sessions and educational programs.  Additionally, applicant must indicate that the publications and videos are provided online for proper classification.

 

The Class 042 identification of services includes indefinite wording that must be clarified for registration and proper classification purposes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, the wording “Implementation of search optimization tools” is vague and overbroad because this wording does not clearly indicate a service limited to a single class.  The nature of the service is unclear and could encompass technological services in Class 042 as well as search engine optimization for sales purposes in Class 035.

 

The wording “information services in the field of workplace transformation, namely the standardization of employee devices, upgrade and migration to new systems, software and devices;” in the Class 042 identification must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend this wording to specify the particular subject matter of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  Classification of information services is based on the subject matter of the information provided.  TMEP §1402.11(b).  Information related to employee retention would fall into Class 035.

 

 

Applicant may adopt the following identification, if accurate: 

 

 

Educational services, namely workshops, seminars, leadership briefings, information sessions and educational programs in the field of [specify]; Providing electronic online, non-downloadable publications in the nature of periodicals, newsletters, reports, articles, memoranda, guides, manuals and directories and providing on-line, non-downloadable videos and on-line journals, namely, blogs all in the fields of human resources, employee compensation, financial benefits, retirement planning, pension and retirement plans, health care, health care plans, dental plans, prescription plans, vendor selection and management, personnel management, talent evaluation and selection, workforce effectiveness, rewards management, employee job evaluation, personnel policies, employer-employee communications, business and organizational management and operations, organizational governance, strategic planning, change management, organizational culture, tools and technology, data management, system configuration and integration, system implementation, analytics, insurance, insurance claims, risk management, risk evaluation, actuarial matters, financial services, investments, financial planning, financial modeling, asset allocation, claims management, quality assurance, the drafting of plan documents and amendments, preparation of summary plan descriptions, and other corporate communications, administrative forms, and procedures in Class 041.

 

Custom computer software programing and design services; computer modeling services; Information technology consultation services; Computer and network security services, namely, restricting unauthorized access to {indicate, e.g., computer networks; Computer services namely, deployment, integration, configuration of software as a service (SAAS) systems and networks; Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use};  Application service provider (ASP) services, namely, hosting managing, developing, and maintaining applications, software, websites, and databases of others of others all in the fields of resources, employee compensation and benefits, pension and retirement plans, insurance, health care, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration, personnel management, workforce effectiveness, rewards management, employee job evaluation, personnel policies, employer-employee communications, information technology, insurance claims, risk management, risk evaluation, actuarial matters, financial services, financial planning, financial modeling, and asset allocation; Providing an Internet website portal in the fields of technology and software development; Providing temporary use of online, non-downloadable software for use in financial modeling, stochastic modeling, evaluating jobs and benefit plans, creating and maintaining employee pay structures, evaluating employee performance, asset allocation, and for modeling, recording, organizing, calculating, reporting, displaying, analyzing, evaluating, comparing, predicting, and updating actuarial data, financial data, business data, and human resources data, all for use in the fields of human resources, employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration, financial planning, personnel management, workforce effectiveness, rewards management, employee job evaluation, employer-employee communications, actuarial matters and business process management; Providing temporary use of online, non-downloadable software for use in identifying inefficiencies in business models, employee job evaluation, employer-employee communications, human resources, information technology, business process management, insurance, insurance claims, risk management, risk evaluation, actuarial matters, financial services, investments, and financial planning; Providing electronic scanning of images and digitizing of {indicate type of visual material, e.g. photographic images, artwork, paintings, etc.} [NOT the taking of digital photographs]; Providing electronic storage and retrieval of data for others; Maintenance of telecommunication systems, computerized call center systems, and technical help desks for others in Class 042.  Research and information services in the fields of human resources, employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration [these services are vague and indefinite as the nature of the “information and research services” is unclear.  For example, information in the field of human resources is Class 035] Personnel management, workforce effectiveness, actuarial matters, financial services, financial planning, and financial modeling these services are vague and indefinite as the nature of the “information and research services” is unclear.  For example,  consultation in the field of personnel management and workforce effectiveness is Class 035.  The wording” actuarial matters, financial services, financial planning, and financial modeling” is indefinite in Class 042; however, “actuarial services” and financial planning are in Class 036.  Software for producing financial modelling may be in Class 009, if downloadable or Class 042 if provided online and not downlowadable.  The nature of the “financial services” must be specified; however these services are generally classified in Class 036.

 

ADVISORIES

 

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’s goods and/or 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.  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 goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below:

 

(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).  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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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).

 

 

 

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  

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Examining Attorney

Law Office 112

kimberly.perry@ustpo.gov

571-272-9208 (direct)

 

 

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 12, 2019 for

U.S. Trademark Application Serial No. 88476463

 

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. 

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Examining Attorney

Law Office 112

kimberly.perry@ustpo.gov

571-272-9208 (direct)

 

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 12, 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.”