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:  October 02, 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.

 

 

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 of Goods Requirement
• Multiple-Class Application Requirements

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES REQUIREMENT

The wording “Recorded and downloadable media; telecommunication devices and equipment; software and computerized encoded electronic chip card containing programming, including instructional manuals for use as integrated computer application to facilitate call-taker and dispatcher ability to process telephone calls through increased access and networking to and from call taker and third-party databases” in the identification of goods is indefinite and must be clarified because applicant has not provided sufficient details regarding the function and/or purpose of these goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Additionally, applicant must clarify the wording “. . . computer software . . .; computer software; contact center software; telecommunication devices and computer devices, software and databases, namely, . . . computer software, all for use in operating, managing, manipulating and analyzing electronic emergency networks and security networks, emergency information systems and person location systems; computer software for use in generating, updating, maintaining, and mapping wireless tower information and sector mapping data; software for enabling intelligent routing of digital files over various network protocols such as TCP/IP and ISDN; computer software and computer software platforms for performing workforce management, namely, for facilitating and monitoring scheduling; computer software for use in providing communications between businesses and their clients, between medical laboratories and medical offices and their patients and between schools and students or their parents, via traditional voice and fax communication lines, via wireless communications systems and via communication lines on global computer networks; computer . . . software for speech synthesis, speech recognition, interactive speech and voice recognition, hosting services, managing infrastructure for speech applications and speech systems; computer software to facilitate integration and delivery of services for audio, video and data web casting, audio, video and data streaming over a global computer network, and conference calling; customer response software for searching, retrieving and delivering information; computer software for analyzing interaction between a business and those communicating with the business, including analyzing interactive voice response systems and activities as well as other automated interactive response systems; computer software for facilitating and reporting upon referral-based marketing; computer software for mass communications in response to a crisis or emergency” in the identification of goods and/or services in International Class 9 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods and/or services are.  Further, this wording could identify goods and/or services in more than one international class.  For example, downloadable or recorded software are in International Class 9 and non-downloadable software is in International Class 42. 

 

Applicant may substitute the following wording, if accurate:

 

Class 9: Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring {indicate subject matter, e.g., music, information related to car maintenance, etc.}; Downloadable computer software for encryption; blank digital or analogue recording and storage media; computers and computer peripheral devices; Downloadable computer operating system software; Telecommunications equipment, namely, fiber-optic transceivers, fiber optic repeaters, converters and optimizers, wave division multiplexers, free-space optics transmission systems, switches including Ethernet switches and routers, fiber-to-the-home and ethernet-over-VDSL access aggregators, terminators and repeaters, and remote presence management products, namely, switches, and console, alarm, sensor and power management devices; Downloadable computer software for use to take and dispatch calls and determine call-taker and dispatcher availability in the field of telecommunications; Computer hardware equipment and recorded software sold as a unit for use in a contact center for receiving and processing phone calls; Recorded software and computerized encoded electronic chip card containing programming, including instructional manuals for use as integrated computer application, used to facilitate call-taker and dispatcher ability to process telephone calls through increased access and networking to and from call taker and third-party databases; computer networking products, namely, downloadable software application and operating software and hardware in the nature of computer network hubs, switches, routers and computer networking access points all for connecting network switches to other network switches via IP-based and ISDN-based and TDM-based (time division multiplexing-based) network transport; downloadable middleware for middleware software solution for cloud computing that facilitates the distribution of notification messages to individuals or groups through communication devices; apparatus and instruments for recording, transmission, reproduction and processing of sound, images and data; telecommunication devices, namely, wireless and wire-line telecommunication telephone terminals in the nature of public and private emergency phone call apparatus; telecommunication devices and computer devices, software and databases, namely, portable telecommunication instant messaging devices, computer hardware and peripheral devices, downloadable databases in the field of telecommunications, and downloadable computer software, all for use in operating, managing, manipulating and analyzing electronic emergency networks and security networks, emergency information systems and person location systems; downloadable computer software for use in generating, updating, maintaining, and mapping wireless tower information and sector mapping data; downloadable software for enabling intelligent routing of digital files over various network protocols such as TCP/IP and ISDN; downloadable computer software and downloadable computer software platforms for performing workforce management, namely, for facilitating and monitoring scheduling; downloadable computer software for use in providing communications between businesses and their clients, between medical laboratories and medical offices and their patients and between schools and students or their parents, via traditional voice and fax communication lines, via wireless communications systems and via communication lines on global computer networks; computer hardware and downloadable software for speech synthesis, speech recognition, interactive speech and voice recognition, hosting services, managing infrastructure for speech applications and speech systems; downloadable computer software to facilitate integration and delivery of services for audio, video and data web casting, audio, video and data streaming over a global computer network, and conference calling; electronic voice and data controller for emergency response telephony systems intended for use by public safety professionals; downloadable electronic newsletters in the field of business, business topics, personal interests and professional interests; Recorded software in the nature of customer response software for searching, retrieving and delivering information; Downloadable computer software for analyzing interaction between a business and those communicating with the business, including analyzing interactive voice response systems and activities as well as other automated interactive response systems; Downloadable computer software for facilitating and reporting upon referral-based marketing; Downloadable computer software for mass communications in response to a crisis or emergency

 

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 goods and/or 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 goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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.

 

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.

 

 

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  

 

 

/Laila Sabagh/

Laila Sabagh

Trademark Examining Attorney

Law Office 127

(571) 272-8230

Laila.Sabagh@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 02, 2019 for

U.S. Trademark Application Serial No. 88488583

 

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. 

 

 

/Laila Sabagh/

Laila Sabagh

Trademark Examining Attorney

Law Office 127

(571) 272-8230

Laila.Sabagh@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 02, 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.”