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:

 

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.

 

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).

 

SUMMARY OF ISSUES

·       Identification and Classification of Services

·       Multiple-Class Application Requirements

IDENTIFICATION AND CLASSIFICATION OF SERVICES

 

The wording “telecommunications services, namely, using positioning or location technology to determine the geographic location of a mobile telephone handset, whether in active use or idle, by interfacing with a wireless communications network” is indefinite and misclassified.  Location and monitoring services are classified according to what specifically is being located or monitored.  Class 45 includes location services for stolen property while Class 42 includes monitoring through observation of a physical condition to determine changes in that condition.

 

Additionally the wording “Telecommunications services”, “telecommunications services, namely, providing alerts via phone, email, text or Internet”, “telecommunications services, namely, providing access to two-way communications systems in the nature of audio teleconferencing, telephone communications, and voice, data and image messaging in the fields of power and utilities, education, government, public safety, emergency management, healthcare and pharmaceuticals”, “emergency communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to traditional landline telephone communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted connection”, “automatic call and email forwarding and distribution of personal or institutional messages, containing voice, images or data, particularly short message service (SMS) via a global computer network or the internet”, and “communication services for public safety emergency communications, namely, consolidation of voice, data management and provisioning, and call routing and delivery for local and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global communications networks” is indefinite as clarified in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must clarify the type of telecommunications service, type of alerts, type of messaging of voice, data, and images, form of emergency communications, type of call and email forwarding and distribution, and lastly, form of communications services being provided.

 

Lastly, applicant must clarify the wording “Voice over Internet-Protocol (VoIP) services; web, video, audio and data conferencing services and playback of taped web, voice, video and data conferences” because it is unclear what is meant by “playback” in this context.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In summary, applicant may adopt the following identification, if accurate:

 

International Class 38: Telecommunications access services; Unified Communications services that facilitate communications across various networks, media and devices, namely, communication via computer terminals, by digital transmission, or by satellite; Voice over Internet-Protocol (VoIP) services; web, video, audio and data conferencing services and playback electronic transmission of taped web, voice, video and data conferences; telecommunications and teleconferencing consulting services; data streaming services; internet telephony services; telecommunication services, namely, local and long distance transmission of voice, data, graphics, images, messages by means of telephone, telegraphic, cable, Internet, satellite, broadband optical, wireless transmission and global communications networks; electronic voice messaging, namely, the recording and subsequent transmission of voice messages by telephone and global computer networks; electronic, electric, and digital transmission of voice, data, images, signals, and messages; communication services, namely, providing access to electronic communication systems in the nature of electronic telecommunication connections between communication carriers and private networks that facilitate access to and use of emergency information, text, pictures and streaming media by emergency administration personnel, public safety professions and public service access providers; telecommunications services, namely, providing electronic message alerts via phone, email, text or Internet; telecommunications services, namely, providing access to two-way communications systems in the nature of audio teleconferencing, telephone communications, and electronic messaging of voice, data and images messaging in the fields of power and utilities, education, government, public safety, emergency management, healthcare and pharmaceuticals; telephone communications services, namely, telephone call management services in the nature of bi-directional call routing and call forwarding services; telecommunications services, namely, using positioning or location technology to determine the geographic location of a mobile telephone handset, whether in active use or idle, by interfacing with a wireless communications network; communication services, namely, telephone communication services for reporting and updating the status of trouble tickets and issue reports for utility companies; internet communication services, namely, providing voice communication services via the internet for reporting and updating the status of trouble tickets and issue reports for utility companies and allowing utility companies to share call center resources; automated telephone voice messaging services and broadcast telephone voice messaging services; emergency radio communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to traditional landline telephone communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted connection; voice- activated dialing services; transmission, reception and processing of coded and emergency signals; automatic call and email forwarding and distribution in the nature of wireless transmission, of personal or institutional messages, containing voice, images or data, particularly short message service (SMS) via a global computer network or the internet; broadcasting emergency situations via telephone, radio, television, cable television, wireless telecommunications and data communications, satellite and global computer networks; telecommunications gateway services, namely call generation and voice messaging; telecommunication services, namely a nationwide comprehensive service for wireless long distance, local telephone companies, satellite communications, alternative and competitive local exchange carriers, and other telecommunications providers to interconnect and integrate disparate systems and traditional telecommunication providers to provide automated call routing for access to emergency support public safety answering points; communication services in the nature of electronic transmission for public safety emergency communications, namely, comprising the consolidation of voice, data management and provisioning, and call routing and delivery for local and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global communications networks; telecommunications services, namely, providing an automated telephone screening service which distinguishes an answering machine from a live voice in order to determine the appropriate notification method to be used; telecommunications gateway services, namely, providing call routing functions and connectivity between a mobile switching center or telecommunications service provider to a public safety answering point (PSAP); information, consultancy and advisory services relating to all the aforesaid services; Electronic data interchange services in the field of healthcare transactions such as enrollment, customer service, monitoring, care coordination, claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and payment communications between healthcare providers and payers

 

International Class 42: Telecommunications services for monitoring the functionality of devices, using positioning or location technology to determine the geographic location of a mobile telephone handset, whether in active use or idle, by interfacing with a wireless communications network

 

International Class 45: Telecommunications services for locating stolen property, using positioning or location technology to determine the geographic location of a mobile telephone handset, whether in active use or idle, by interfacing with a wireless communications network

 

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).

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

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  

 

 

Sasha Rios

/Sasha Rios/

Trademark Examining Attorney

Law Office 125

P:  (571)272-2616

Sasha.Rios@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 October 21, 2019 for

U.S. Trademark Application Serial No. 88481161

 

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. 

 

 

Sasha Rios

/Sasha Rios/

Trademark Examining Attorney

Law Office 125

P:  (571)272-2616

Sasha.Rios@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 October 21, 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.”