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:  February 03, 2020

 

This Office action is in response to applicant’s communication filed on January 9, 2020.  The referenced correspondence 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.  The following issue remains outstanding.

 

REQUIREMENT MAINTAINED FOR AN ACCEPTABLE AMENDED IDENTIFICATION OF GOODS AND SERVICES

 

A.    International Class 9

 

The identification of goods remains indefinite and must be clarified because the applicant must specify that the computer software is downloadable to be correctly classified in International Class 9.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please note that “providing temporary use of on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}” is classified in International Class 42.

 

B.     International Class 42

 

The wording “fingerprint, iris, face, and hand recognition services using cloud-based software technology” in the identification of services is indefinite and must be clarified because additional information is required.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must clarify if these services are comprised of “providing on-line non-downloadable software using artificial intelligence for facial, iris, and hand recognition,” “application service provider (ASP) featuring software using artificial intelligence for facial, iris, and hand recognition,” “software as a service (SAAS) services featuring software using artificial intelligence for facial, iris, and hand recognition,” and/or “providing temporary use of on-line non-downloadable cloud computing software using artificial intelligence for facial, iris, and hand recognition.”  Please note that “examination of fingerprints and handwriting for the purpose of forensic scientific intelligence” and “fingerprinting services” are classified in International Class 45.   

 

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

 

International Class 9:  Downloadable computer software for biometric verification purposes; downloadable computer software for biometric identification purposes; downloadable computer software for verification and identification purposes by means of storage of biometric features and comparison of the stored features; downloadable 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; downloadable computer security software based on biometrics; downloadable computer software for biometric authentication purposes, namely, for fraud protection and detection; downloadable 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 software technology for network-based transactions; providing temporary use of on-line non-downloadable cloud computing software using artificial intelligence for facial, iris, and hand recognition; providing user authentication services using biometric software technology, namely, providing authentication of individual identity information using biometric features stored on a computer network; providing computing user authentication services using biometric software technology, namely, providing authentication of individual identity information using biometric features stored on a computer network in order to protect network accessible data associated with individuals.

 

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).

 

ASSISTANCE

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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.

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class(es) 9 and 42 will be deleted from the application:

 

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; 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:  Fingerprint, iris, face, and hand recognition services using cloud-based software technology.

 

The application will then proceed with the following goods and/or services in International Class(es) 9 and 42: 

 

International Class 9:  Electronic databases in the fields of business security, individual and business privacy, and identification verification recorded on computer media.

 

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 software technology for network-based transactions; providing user authentication services using biometric software technology, namely, providing authentication of individual identity information using biometric features stored on a computer network; providing computing user authentication services using biometric software technology, namely, providing authentication of individual identity information using biometric features stored on a computer network in order to protect network accessible data associated with individuals.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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 February 03, 2020 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 February 03, 2020, 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.”