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 Services Requirement
• Multiple-Class Application Requirements

 

 

IDENTIFICATION OF SERVICES REQUIREMENT

The wording “Scientific and technological services and research and design relating thereto; industrial analysis and industrial research services; management in the field of standards compliance for emergency communications in the nature of wireline, wireless and internet communications for network design and deployment, data management services, namely, technical support services in the nature of remote administration and management of in-house and hosted datacenter devices, databases and software applications, with regard to computer information systems in the nature of geographical and location information system design, management and integration; providing a web-hosting platform and hosting web content for others business financial information, investor relations and or public filings; cloud-based services for speech and language recognition and interpretation; cloud-based services for searching, retrieving and delivering information; cloud-based services 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; cloud-based services for facilitating and reporting upon referral-based marketing; cloud-based services for mass communications in response to a crisis or emergency; providing a website that gives users the ability to review various print, photographic, audio and video content posted by others, and engage in social, business and community networking” in the identification of services is indefinite and must be clarified because applicant must provide further detail regarding the nature and use of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, applicant must clarify the wording “integration of telecommunications and data networking equipment and application software for providing Unified IP Communications services across multiple network infrastructures and communication protocols; management in the field of standards compliance for emergency communications in the nature of wireline, wireless, and internet communications for network design and deployment; scientific study and research in the fields of medicine, management of illness, health care delivery and the scientific and operational aspects of health care policy, health care cost management and financing as these fields impact on quality of health care” in the identification of services in International Class 42 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 provide the purpose of the services.  Further, this wording could identify services in more than one international class.  For example, integration of telecommunications and data networking equipment is in International Class 37 and integration of telecommunications and data networking application software is in International Class 42. 

 

Applicant may substitute the following wording, if accurate:

 

Class 35: Business and public policy research services in the field of medicine, management of illness, and healthcare delivery as they relate to the operational aspects of healthcare cost management and financing and their impact of quality of healthcare

 

Class 37: integration of telecommunications and data networking equipment for providing Unified IP Communications services across multiple network infrastructures and communication protocols

 

Class 42: Scientific and technological services, namely, research and design in the field of computer networking hardware; industrial analysis and industrial research services in the field of telecommunications hardware; design and development of computers, computer hardware and computer software; Software as a Service (SaaS) provider featuring software for enabling unified communications across various networks, media and devices, namely, software for queuing, handling, logging, recording, monitoring, tracking, supervision, management and routing of telephone calls, facsimile transmissions, video, e-mails, and web based messages, and software for monitoring and management of computer and network systems for security and application optimization purposes; installation, maintenance and repair of computer application software for providing Unified IP Communications services across multiple network infrastructures and communication protocols; integration of telecommunications and data networking application software for providing Unified IP Communications services across multiple network infrastructures and communication protocols; computer services, namely, WAN (wide area network) operating software design; computer application software optimization services, namely, updating of computer network configurations; development of security systems and contingency planning for computer networks; providing temporary use of non-downloadable computer software for enabling unified IP communications across various networks, media and devices; computer security consultancy; platform as a service (PAAS) featuring computer software platforms which allow users to upload geographic information system (GIS) and emergency call data, and generate reports regarding data accuracy, completeness and consistency; providing hosting, managing, developing, researching, analyzing, reporting, verifying, updating and maintaining applications, software, web sites, and databases of others, namely, online non-downloadable software for monitoring and alerting remote sensor status via the internet; computer services, namely, cloud-based computer services featuring temporary use of on-line non-downloadable software for retrieving personally-identifiable information (PII) such as telephone numbers, property records, vehicle records, criminal records, family or business associate information, social media information from commercial and web-based databases and forwarding the summarized, scored and linked information via a flexible, mobile platform to first responder emergency personnel; providing a website featuring technology that enables users to manage and view telecommunications traffic and analysis and reports of telecommunications traffic; research and development for new products for others in the fields of science and technology; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer services, namely, creating an on-line community for registered users to network with other small businesses and enterprise customers, visit virtual small business booths, participate in discussions and webinars, watch keynote speeches and videos, view job boards and engage in on-line social networking in the field of small business; combination and assimilation of computer systems and networks for the purpose of providing automated call routing, automatic location identification and emergency support to public safety answering points; computer services, namely, processing of emergency and non-emergency calls by providing call flow servers to others; providing on-line non-downloadable application programming interface (API) software for transmitting data, voice, text, photographs and video, from telecommunications aggregators or application providers to Public Safety Answering Points (PSAPs); providing a website featuring resources, namely, non-downloadable application programming interface (API) software for transmitting data, voice, text, photographs and video, from telecommunications aggregators or application providers to Public Safety Answering Points (PSAPs); providing online non-downloadable software for mapping, mashups, common operational picture (COP), searching, address identification, routing, map creation, markups and printing; platform as a service (PAAS) featuring computer software platforms for querying, contextually aggregating and delivering supplemental data to public safety professionals in the field of public safety; providing temporary use of a web-based software application for subscribers to select the electronic means by which others may contact them; support services, namely, computer consultation in the nature of advice on the use and operation of computer software and computer systems; leasing of computers and computer software; computer system integration services, namely, integration of computer software and computer hardware; computer services, namely, acting as an application service provider in the field of knowledge management to host computer application software of others for searching and retrieving information from databases and computer networks; providing temporary use of non-downloadable software in the nature of a mobile application for management and monitoring of utilities; management services in the nature of evaluating the goods of others to assure compliance with industry standards, namely, analysis related to industry standards in the field of emergency communications in the nature of wireline, wireless, and internet communications for network design and deployment;  data management services, namely, design and development of computer software for database management, with regard to computer information systems in the nature of geographical information system design and management, and location information systems integration; management of testing the goods of others to ensure products are in compliance with industry standards for emergency communications in the nature of wireline, wireless and internet communications for network design and deployment;  data management services, namely, technical support services in the nature of remote administration and management of in-house and hosted datacenter devices in the nature of servers; databases design and computer software application design specifically regarding computer information systems in the nature of geographical and location information system design, management and integration; computer services, namely, creating an on-line community for registered users to participate in discussions, engage in social networking, and request and provide feedback; providing a web-hosting platform and hosting web content for others for accessing business financial information, investor relation information and or public filings; cloud-based services in the nature of cloud-based software technology for speech and language recognition and interpretation; cloud-based services in the nature of cloud-based software technology for searching, retrieving and delivering information; cloud-based services in the nature of cloud-based 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; cloud-based services in the nature of cloud-based software for facilitating and reporting upon referral-based marketing; cloud-based services in the nature of cloud-based software for mass communications in response to a crisis or emergency; information, consultancy and advisory services relating to all the aforesaid services; Platform as a service (PAAS) featuring computer software platforms for notifying patients with messages related to healthcare appointments, healthcare treatment or related information on behalf of healthcare providers and organizations; Class 42: scientific study and research in the fields of medicine, management of illness, health care delivery; Software as a service (SAAS) services, namely, hosting computer software applications for use by others that allows others to have a single point of entry to access benefit programs; providing temporary use of non-downloadable computer software featuring technology that enables companies, organizations and employees to better manage employee benefit programs; Providing temporary use of on-line non-downloadable employee assistance software programs for counseling for employees of others in the field of workplace labor conflict resolution; Software as a service (SAAS) services, namely, hosting software for use by others for use to monitor a patient's adherence to a prescribed care plan for a medical condition; computer services, namely, providing an online non-downloadable interactive software application for enabling businesses and medical professionals to communicate via voice, text messaging, and electronic mail with clients, customers, and patients; online non-downloadable, Internet-based software application for collecting, managing and automating patient healthcare and healthcare information; software as a service (SAAS) services, namely, hosting Internet-based software for use by others for use in medical practice management, electronic health records management, revenue cycle management, and medical billing in the field of healthcare; platform as a service (PAAS) featuring computer software platforms for medical practice management, revenue cycle management in the field of healthcare; providing a website featuring technology that gives users the ability to review various print, photographic, audio and video content posted by others, and engage in social, business and community networking

 

Class 45: legal management services related to legal compliance with standards for emergency communications in the nature of wireline, wireless, and internet communications for network design and deployment

 

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 4 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. 88488617

 

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.”