United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 09, 2019
PRIORITY ACTION
USPTO database searched; no conflicting marks found. The trademark examining attorney searched
the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d);
TMEP §704.02.
Applicant must address issues shown below. On October 7, 2019 and October 8, 2019, the examining attorney and Nathan C.
Belzer discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37
C.F.R. §2.62(a); TMEP §708.05.
SUMMARY
OF ISSUES
- Specimen Requirement – Class 9
SPECIMEN REQUIREMENT – CLASS 9
The stated refusal refers to International Class 9 only and does not bar registration in the other
class.
Registration is refused because the specimen in International Class 9 is not acceptable as a display
associated with downloadable software and appears to be mere advertising material; thus, the specimen fails to show the applied-for mark in use in commerce for that international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the
specimen fails to indicate the means to enable the user to download or purchase the software from the website. See In re
Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(e), (i) et seq. Without this feature, the specimen is mere advertising material, which is not acceptable as a specimen to show use in commerce for
goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379
(TTAB 2010)); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.04(b), (c).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of
goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with
ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an
introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Webpages may
also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at
least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the software identified in the application. A “verified
substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:
“The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the
amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is
required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark
Electronic Application System (TEAS) form, please go to the Specimen
webpage.
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.
EXAMINER’S AMENDMENT
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action
section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and services are permitted only if they clarify
or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
IDENTIFICATION OF GOODS AND SERVICES AMENDMENT:
The identification of goods and services is amended to read as follows:
- Class 9: Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications for use in the field of general business
processes, namely, as a help desk solution allowing a user to identify and resolve problems associated with the user's computer network; Downloadable computer software for use in maintaining a database of problems and solutions identified on a user's
computer network; Downloadable computer software, namely,
downloadable system management software focused on the provisioning, configuration, and change management of data center infrastructure; Downloadable
computer software and programs for managing computer systems, databases, and applications,
namely, providing data management, information technology process automation, application management, storage and performance optimization, and recovery of mainframe and distributed systems
computers, and the databases, business applications, programs, and systems that operate therein; Downloadable computer software for computer systems and computer network management, namely, downloadable software for
computer network monitoring and computer system diagnostics; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, namely, downloadable software for managing, deploying, and removing software applications, maintaining software inventories, maintaining software license compliance, and managing application
security on mobile devices, desktop devices, and cloud computing networks; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, namely, downloadable software for use as a virtual concierge that provides awareness of and access to available services, content, and alerts; Downloadable
computer software and downloadable computer application software for
mobile devices, desktop devices, and web applications that provides a virtual help desk and self-help computer and software support services; Downloadable computer software and downloadable computer application software for mobile devices,
desktop devices, and web applications that provides real-time, integrated service management of other computer software, information systems, computer hardware, computer networks, and information
databases; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides real-time alerts and updates for end-to-end performance management;
Downloadable computer software and downloadable computer application software for mobile devices that provides access to applications and services through a mobile operating system and interface; Downloadable computer software and downloadable
computer application software for desktop devices that provides access to applications and
services through a desktop operating system and interface; Downloadable computer software and downloadable computer
application software for web-based devices that provides access to applications and services through a web-based system and interface; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides synchronization of
applications and content across platforms and devices; Downloadable computer software and downloadable computer
application software for mobile devices, desktop devices, and web applications that delivers user-specific information about usage, compliance, location, applications, devices, and location-aware
services and resources; Downloadable computer software and
downloadable computer application software for mobile devices,
desktop devices, and web applications that delivers location-aware service, updates, and notifications; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides appointment scheduling
and appointment notifications; Downloadable computer software and
downloadable computer application software for mobile devices,
desktop devices, and web applications, to manage a concierge service; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides secure access and storage of documents; Downloadable
computer software and programs for managing and monitoring computer systems, databases, and
applications, namely, downloadable computer software and programs for providing data extraction, data capturing, data filtering, data analytics, security monitoring, data management, application management,
performance optimization, self-management, and backup and recovery of mainframe databases; downloadable computer software and programs for automatically managing, diagnosing, repairing, securing, and optimizing mainframe processes;
downloadable computer software and programs for security control
of computer systems, namely, downloadable computer software and
programs for providing real time notifications of security events, including network attacks, suspicious behavior and policy violations; downloadable computer software and
programs for application development, namely, downloadable software that automates change requests into mainframe databases as part of the code lifecycle
- Class 42: Consulting services relating to research and design of computer hardware and computer software for
others; technical consulting services, namely, troubleshooting of computer hardware and software problems via phone, email and in person; maintenance services for computer software; computer
programming services for others in the field of general business processing; software as a service (SAAS) services featuring computer software for use in the field of general business processes,
namely, as a help desk solution allowing a user to identify and resolve problems associated with the user's computer network and to maintain a database of identified problems and solutions; Computer
consulting services in the field of system management software focused on the provisioning, configuration and change management of data center infrastructure; software as a service (SAAS) services
featuring, computer software, namely, system management software focused on the provisioning, configuration and change management of data center infrastructure; Software as a service (SAAS) services
featuring computer software and programs for managing computer systems, databases and applications, namely, providing data management, information technology process automation, application
management, storage and performance optimization and recovery of mainframe and distributed systems computers and the database and business applications, programs, and systems that operate therein;
Remote and on-site monitoring of computer systems; software as a service (SAAS) services featuring computer software for computer systems and computer network management, namely, software for
computer network monitoring and computer system diagnostics; Software as a service (SAAS) services featuring software for managing, deploying, and removing software applications, maintaining software
inventories, maintaining software license compliance, and managing application security on mobile devices, desktop devices, and cloud computing networks; software as a service (SAAS) services
featuring software for use as a virtual concierge that provides awareness of and access to available services, content, and alerts; Software as a service (SAAS) services featuring software that
provides a virtual help desk and self-help computer and software support services; Software as a service (SAAS) services featuring software that provides real-time, integrated service management of
other computer software, information systems, computer hardware, computer networks, and information databases; Software as a service (SAAS) services featuring software that provides real-time alerts
and updates for end-to-end performance management; Software as a service (SAAS) services featuring software that provides access to applications and services through a mobile operating system and
interface; Software as a service (SAAS) services featuring software that provides access to applications and services through a desktop operating system and interface; Software as a service (SAAS)
services featuring software that provides access to applications and services through a web-based system and interface; Software as a service (SAAS) services featuring software that provides
synchronization of applications and content across platforms and devices; Software as a service (SAAS) services featuring software that delivers user-specific information about usage, compliance,
location, applications, devices, and location-aware services and resources; Software as a service (SAAS) services featuring software that delivers location-aware service, updates, and notifications;
Software as a service (SAAS) services featuring software that provides appointment scheduling and appointment notifications; Software as a service (SAAS) services featuring software that manages a
concierge service; Software as a service (SAAS) services featuring software that provides secure access and storage of documents; Software as a service (SAAS) services featuring software that
provides cognitive service management; software as a service (SAAS) services featuring software that provides chatbots and virtual agents; software as a service (SAAS) services featuring software
that provides self-service resolutions for information technology support requests; software as a service (SAAS) services featuring software that provides a catalog of available products and
services; software as a service (SAAS) services featuring software that provides information, data and analytics with regard to data centers and digital assets; software as a service (SAAS) services
featuring software that allows users to map relationships across multiple cloud platforms; software as a service (SAAS) services featuring software that determines which digital assets have an impact
on critical business functions; software as a service (SAAS) services featuring software that automatically classifies, assigns and routes service management requests; software as a service (SAAS)
services featuring software that allows users to automate workflows; software as a service (SAAS) services featuring software that provides case management
See TMEP §§1402.01, 1402.01(e).
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.
/Kerry A. Nicholson/
Trademark Examining Attorney
Law Office 120
Phone: (571) 272-5159
kerry.nicholson@uspto.gov
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause the application to abandon. The response must be
received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely
respond.