To: | Bentley Systems, Incorporated (docket@c-m.com) |
Subject: | U.S. Trademark Application Serial No. 88507454 - OPENCONSTRUCTION - 107051-0322 |
Sent: | September 18, 2019 01:48:59 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88507454
Mark: OPENCONSTRUCTION
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Correspondence Address:
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Applicant: Bentley Systems, Incorporated
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Reference/Docket No. 107051-0322
Correspondence Email Address: |
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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 18, 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.
DATABASE SEARCH
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).
CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Applicant may adopt the following identifications, if accurate: [suggestions are bolded]:
Int. class 9; Computer software; downloadable computer software for design, engineering, analysis and production of
infrastructure assets; downloadable computer software for capturing, visualizing, organizing, modeling, analyzing and sharing data regarding infrastructure assets;
Int. class 42; Cloud computing; cloud computing featuring non-downloadable software for design, engineering, analysis and
production of infrastructure assets; providing temporary use of non-downloadable software for capturing, visualizing, organizing, modeling, analyzing and sharing data regarding infrastructure assets;
electronic data storage for data regarding infrastructure assets; software as a service (SAAS); software as a service (SAAS), namely, hosting software for use by others
for design, engineering, analysis and production of infrastructure assets.
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.
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that could be classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes. 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ASSISTANCE
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
/Karen K. Bush/
Trademark Examining Attorney
Law Office 108
571-272-9136
Karen.Bush@uspto.gov
RESPONSE GUIDANCE