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 26, 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.

 

Summary of Issues that the Applicant Must Address

 

1)      Amended Identification of Goods and Services is Required

2)      Attorney Bar Information is Required

3)      Attorney Attestation is Required

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES IS REQUIRED

 

A.    International Class 9

 

The wording “electronic databases in the fields of business security, individual and business privacy, and identification verification” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “electronic databases in the fields of business security, individual and business privacy, and identification verification recorded on computer media” classified in International Class 9.  Otherwise, if the databases are only available online, the services are classified according to the type of information being provided in the databases.  For example, “providing an on-line database featuring information in the field of physical business security and protection procedures for use during disaster and emergency scenarios” is classified in International Class 45.

 

B.     International Class 42

 

The wording “Provision of secure computing technology services” in the identification of services is indefinite and must be clarified because the nature of these services remains unclear.  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 services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  For example, these services may include “Software as a service (SAAS) services featuring software for protecting data and information from unauthorized access” and/or “computer security threat analysis for protecting data and information from unauthorized access.”

 

C.     International Class 45

 

The wording “Personal identification verification services, namely, biometric capture, bioauthentication, biometric authentication, and fingerprint, iris, voice, face, and hand recognition” in the identification of services for International Class 45 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, this wording could encompass “providing user authentication services using biometric hardware and software technology for {indicate, e.g., e-commerce transactions, secure entry and exit door access, etc.}” classified in International Class 42, “providing temporary use of on-line non-downloadable cloud computing software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc. and, if software is content- or field-specific, the field of use}” in International Class 42, and/or “intelligent fingerprint, iris, voice, face, and hand recognition services using cloud-based software technology” in International Class 42.

 

The wording “Biometric security services” in the identification of services 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, this wording could encompass “providing user authentication services using biometric hardware and software technology for e-commerce transactions” classified in International Class 42.

 

The wording “user authentication services for security purposes” and “biometric identity authentication services for security purposes” in the identification of services 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, this wording could encompass “providing user authentication services using biometric hardware and software technology for {indicate, e.g., e-commerce transactions, secure entry and exit door access, etc.}.”

 

The wording “providing user authentication services in the nature of providing authentication of individual identity information using biometric features stored on a computer network; Providing computing user authentication services in the nature of providing authentication of individual identity information using biometric features stored on computer networks in order to protect network accessible data associated with individuals” in the identification of services 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, this wording could encompass “providing user authentication services using biometric hardware and software technology, namely, providing authentication of individual identity information using biometric features stored on a computer network” and “providing computing user authentication services using biometric hardware and software technology, namely, providing authentication of individual identity information using biometric features stored on computer networks in order to protect network accessible data associated with individuals” in International Class 42.

 

Please note that services entailing “identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet” and the like were found to be unclear and likely to encompass computer technology services in International Class 42 under Nice 11-2017. Therefore this wording is no longer acceptable.

 

The applicant may adopt the following amended identification of goods and services, if accurate:

 

International Class 9:  Computer software for biometric verification purposes; Computer software for biometric identification purposes; Computer software for verification and identification purposes by means of storage of biometric features and comparison of the stored features; Computer software for use in biometric capture, bioauthentication, biometric authentication, and in fingerprint, iris, voice, face, and hand verification; electronic databases in the fields of business security, individual and business privacy, and identification verification recorded on computer media; Computer security software based on biometrics; Computer software for biometric authentication purposes namely, for fraud protection and detection; Computer software for detecting fraudulent biometric data by analyzing acquired biometric data for authenticity.

 

International Class 42:  Computer security threat analysis for protecting data and information from unauthorized access; computer security threat analysis for protecting data and information from unauthorized access by analyzing biometric data; computer security threat analysis for protecting data and information from unauthorized access by analyzing acquired biometric data for authenticity; providing user authentication services using biometric hardware and software technology for {indicate, e.g., e-commerce transactions, secure entry and exit door access, etc.}; intelligent fingerprint, iris, voice, face, and hand recognition services using cloud-based software technology; providing user authentication services using biometric hardware and software technology, namely, providing authentication of individual identity information using biometric features stored on a computer network; providing computing user authentication services using biometric hardware and software technology, namely, providing authentication of individual identity information using biometric features stored on computer networks in order to protect network accessible data associated with individuals.

 

Please note that International Class 45 must be deleted from the application since no services remain classified in this class.

 

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 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).

 

ATTORNEY BAR INFORMATION IS REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

ATTORNEY ATTESTATION IS REQUIRED

 

Attorney statement required.  Applicant’s attorney must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

ASSISTANCE

 

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. 

 

SEARCH RESULTS

 

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).

 

RESPONSE TO OFFICE ACTION

 

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  

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@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 September 26, 2019 for

U.S. Trademark Application Serial No. 88505544

 

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. 

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@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 September 26, 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.”