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

 

INTRODUCTION

 

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 FOR CONFLICTING 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 GOODS AND SERVICES

·         MULTIPLE CLASS APPLICATION REQUIREMENTS

·         REPRESENTATION ADVISORY

·         ADVISORY – BATCH UPDATING OF US COUNSEL INFORMATION

 

IDENTIFICATION OF GOODS/SERVICES

 

All references to “software” are misclassified and belong in either Class 09 as downloadable software or Class 42 as online, non-downloadable software. Applicant must also specify the function of the software, and, if relevant, the field of use. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “messaging platform facilitating messaging and communications adhering to a social contract of predefined tenor and content” 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 “Platform as a service (PAAS) featuring computer software platforms for facilitating messaging and communications adhering to a social contract of predefined tenor and content” in International Class 42.

 

The wording “Providing temporary use of online non-downloadable software and applications for instant messaging, voiceover internet protocol (VOIP), video conferencing, and audioconferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider(ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; Online social networking services;” is misclassified and belongs in International Class 42.

 

The wording “Identification verification services, namely, providing authentication of personal identification information” is no longer acceptable because the nature of the services activity is unclear and it appears to encompass computer technology services in International Class 42. Please clarify accordingly.

 

Applicant may adopt the following identification, if accurate. Please note that any wording in bold below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant's version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold.

 

09: Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Downloadable software in the nature of a messaging application; downloadable computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Downloadable computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Downloadable software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Downloadable computer database management software for use in personalizing the content of e-mail communications; downloadable digital stationary software; downloadable software and services for capturing user reactions to messaging;

 

38: Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Downloadable computer database management software for use in personalizing the content of e-mail communications; digital stationary software and services; software and services for capturing user reactions to messaging; messaging platform facilitating messaging and communications adhering to a social contract of predefined tenor and content; Telecommunication services, namely, data transmission and reception services via telecommunication networks; Telecommunications services, namely, personal communication services; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services by mobile phones; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and online electronic bulletin boards for transmission of messages among users in the field of {indicate field or subject}; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with the intent to maintain and strengthen relationships; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer the website user on a mobile device andor the Internet users to other local and global online locations; - Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and websites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voiceover internet protocol (VOIP), video conferencing, and audioconferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider(ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; Online social networking services; Identification verification services, namely, providing authentication of personal identification information

 

42: Providing online, non-downloadable computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Providing online, non-downloadable computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Providing online, non-downloadable computer software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Providing online, non-downloadable digital stationary software; Providing online, non-downloadable computer software for capturing user reactions to messaging; Platform as a service (PAAS) featuring computer software platforms for facilitating messaging and communications adhering to a social contract of predefined tenor and content; Providing temporary use of online non-downloadable software and applications for instant messaging, voiceover internet protocol (VOIP), video conferencing, and audioconferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating an on-line community for registered users to form virtual communities to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, providing on-line facilities for real-time interaction with others for the purpose of organizing and conducting discussions via communication networks; Application service provider(ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer technology services, namely, providing temporary use of non-downloadable software to verify and authenticate an individuals identity.

 

45: online social networking services

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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 that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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 Section 1(b):

 

(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).  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.

 

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.

 

REPRESENTATION ADVISORY  

 

U.S.-licensed attorneys representing trademark filers must provide all of the following:

• Their name, postal address, and email address
• A statement attesting to their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory
• Information concerning their bar membership (state, number if applicable, and year of admission).
• See more about U.S.-licensed attorneys.

 

Canadian patent agents are no longer authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. See more about Canadian patent agents.

 

Canadian trademark attorneys and agents continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed U.S.-licensed attorney. See more about Canadian trademark attorneys and agents.

 

ADVISORY – BATCH UPDATING OF US COUNSEL INFORMATION

 

The TEAS Revocation, Appointment, and/or Change of Address of Attorney form permits an attorney to update address information and add bar information for a batch of applications or registrations.  The signature of the applicant is not required if the attorney is not making changes to the representation and merely updating information in the record.

 

RESPONSE GUIDELINES

 

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.

 

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  

 

 

/Cassondra Anderson/

Examining Attorney

Law Office 103

Cassondra.Anderson@uspto.gov

(571) 272-5595

 

 

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. 88517705

 

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. 

 

 

/Cassondra Anderson/

Examining Attorney

Law Office 103

Cassondra.Anderson@uspto.gov

(571) 272-5595

 

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.”