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:  November 12, 2019

 

This Office action is in response to applicant’s communication filed on 10/14/2019.

 

The descriptions of goods and services for Classes 009, 016 and 041 have been accepted and made of record.

 

However, the wording “financial monitoring services of healthcare vendors; … information services, namely, providing information in the field of workplace transformation, namely, the standardization of employee devices, upgrade and migration to new systems, software and devices; business consulting services in the fields of personnel management and workforce effectiveness” in the amended identification of services for International Class 035 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.  In particular, (1) “financial monitoring services” are misclassified and (2) the nature of the information provided in the field of “information in the field of workplace transformation, namely, the standardization of employee devices, upgrade and migration to new systems, software and devices” is vague and overbroad such that proper classification cannot be determined.

 

When monitoring services do not primarily involve electronic data collection, quality control, or testing and analysis of physical properties in Class 042, then the monitoring services should be classified according to their primary purpose as indicated in the identification. In this matter, applicant may amend to clarify the nature of the monitoring services, 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).

 

 

 

As to “information services, namely, providing information in the field of workplace transformation, namely, the standardization of employee devices, upgrade and migration to new systems, software and devices; business consulting services in the fields of personnel management and workforce effectiveness”, the service-related subject matter of the information is unclear as written.  Clarification of the service-related subject matter of the information services is required for clarity and to ensure proper classification.  The double use of “namely” also creates ambiguity and does not further define the introductory wording that precedes "namely" using definite terms within the scope of the introductory wording.  Here, the wording after the second use of “namely” clarifies the field of workplace transformation rather than indicating the common name of a narrower services.  Moreover, the service related subject matter of the information services is unclear from “in the field of workplace transformation, namely, the standardization of employee devices, upgrade and migration to new systems, software and devices.”  For example, does “upgrade and migration” modify “to new systems” alone or also “to new systems, software, and devices”? 

 

Providing information about standardization of employee devices could refer to multiple activities according to the following dictionary definition of standardization:  1: to bring into conformity with a standard especially in order to assure consistency and regularity; 2. to compare with a standard : to determine the strength, value, or quality of (something) by comparison with a standard.  See http://www.merriam-webster.com/dictionary/standardization.   Based on the definition, it is unclear what the service-related activity in connection with “standardization of employee devices” is.    For example, “providing workplace transformation information in the field of the quality evaluation of employee electronic devices for the purpose of standardizing employee devices” would be in Class 042 because the service-related subject matter of the information services -  product quality evaluation - is in Class 042.  

 

 

Applicant may substitute the following description for Class 035, if accurate: 

 

Business process management services, namely, business administration and business management of pension and retirement plans, insurance, health care plans, dental plans and prescription plans 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; 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; healthcare plan audit services, namely, auditing of insurance plans; business research services in the field of human resources; business consulting services in the fields of personnel management and workforce effectiveness; business research services in the fields of employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration.

 

The wording “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; business research services in the fields of employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration; information services, namely, providing information in the fields of employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration” in the amended Class 036 identification of services must also 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.  “Data compilation and analysis services” are in Class 035, unless specified “for financial purposes”. “Business research services in the fields of employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration;” are properly classified in Class 035. Further, the wording “information services, namely, providing information in the fields of employee compensation and benefits, pension and retirement plans, insurance, health care plans, dental plans, prescription plans, investments, payment processes, finance and administration” is too broad for proper classification.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). 

 

 

Applicant may substitute the following wording, if accurate:  Advisory solutions in the nature of financial advice and consultancy in the fields of human resources, healthcare, insurance and wealth management; financial consulting services;  financial budget planning, forecasting and reporting, and financial analysis related to enterprise cost-reduction; financial risk management services, namely, insurance portfolio analysis and strategy for optimization; actuarial services; actuarial consulting; financial advisory and consulting services and financial monitoring in relation to healthcare vendors, insurance, employee compensation and financial benefits, employee benefits plans, pension and financial retirement plans, employee health care and prescription insurance plans; financial administration and management of employee benefit plans, namely, health insurance benefits, dental insurance benefits, retirement benefits, employee welfare benefits; financial research and information services; insurance risk management services; data compilation and analysis services for financial purposes in the fields of employee benefits, human capital management, employee compensation, information systems and business process management; information services, namely, providing information related to the financial administration of employee benefit plans, pension and retirement plans, insurance policies, pre-paid health care  and dental plans, prescription plans and employee investment portfolios.

 

 

Finally, the wording “maintenance of telecommunication systems, computerized call center systems” in the amended Class 042 identification of services is unacceptable 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.  In particular, this wording could encompass maintenance of computer hardware systems and maintenance of telecommunications apparatus in Class 037.

 

Applicant may substitute the following wording, if accurate:  Custom computer software programing and design services; computer modeling services; Information technology consultation services; implementation of search optimization tools, namely, software as a service (SAAS) services featuring software for search optimization; computer and network security services namely, software as a service (SaaS) services, featuring software for providing data security, information protection, data loss prevention, data authentication, management of security policies, monitoring cloud services usage, controlling employee access, controlling user access, monitoring and auditing cloud services, and governance and auditing of public and private IT cloud services; computer services, namely, deployment, integration and configuration of software as a service (SAAS) systems and networks; application service provider (ASP) services, namely, hosting, managing, developing, and maintaining applications, software, websites, and databases 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 information technology and computer software development; providing temporary use of on-line, non-downloadable software for 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 imaging, scanning, digitizing services for others to facilitate data authentication and personal verification; providing electronic storage and retrieval of data for others; computer technology support services, namely, help desk services.

 

 

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.

 

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.

 

 

 

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 Attorney, Law Office 112

571-272-9208 (direct)

kimberly.perry@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 November 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 Attorney, Law Office 112

571-272-9208 (direct)

kimberly.perry@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 November 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.”