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 16, 2019

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

SEARCH OF OFFICE’S DATABASE OF 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).

 

 

Applicant must, however, 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.

 

IDENTIFICATION & CLASSIFICATION OF GOODS & SERVICES

 

Applicant has classified “Software as a service (SaaS) services featuring computer software” in International Class 009; however, the proper classification for “software as a service” is International Class 042.  Therefore, applicant may respond by reclassifying these services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

The Class 009 identification also references downloadable instructional manuals.  However, applicant’s goods are indefinite and must be clarified because it is unclear whether the manuals are sold separately or sold as a unit with the software.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01. 

 

Therefore, applicant must amend the identification to clarify whether the manuals are sold separately from or as a unit with the software, and ensure that the classification remains in  Class 009.  See TMEP §§1401.05(a), 1402.01.  If the manuals are sold as a unit with the Class 009 computer software, the identification must indicate that the goods are “sold as a unit” and also specify the items that comprise the unit, with the predominant items listed first.  See TMEP §1401.05(a).

 

Finally, the term “tools” in the Class 009 description is vague and overbroad and must be clarified for registration and classification purposes.  If the “tools” include computer software, the description must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Non-downloadable computer software development tools are in Class 042.

 

 

Applicant may adopt the following wording in Class 009, if accurate:

 

Downloadable computer software for use by residential property owners and/or managers to assist with and automate apartment leasing, renting, management, and accounting for apartment and other rental communities; and downloadable instruction manual and accompanying product specifications sold as a unit; downloadable computer software development tools.

 

If accurate, applicant may also adopt the following description for Class 016:

 

Printed instruction manual and accompanying product specifications for software for use by residential property owners and/or managers to assist with and automate apartment leasing, renting, management, and accounting for apartment and other rental communities.

 

The identification of services for Classes 036 and 042  is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Again, “software as a service (SAAS) services featuring software” is a computer service in Class 042, not Class 036.

 

Applicant may adopt the following identification, if accurate: 

 

Software as a service (SaaS) services featuring computer software for use by residential property owners and/or managers to assist with and automate apartment leasing, renting, management, and accounting for apartment and other rental communities; Providing temporary use of on-line non-downloadable software development tools in Class 042.

 

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, applicant has not identified services properly classified in Class 036.  Thus, no suggestion may be made for Class 036. See TMEP §1402.01(e).

ADVISORIES

 

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’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).

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(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 (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimens are acceptable for class(es) 009, 016 and 042.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  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. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

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  

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Examining Attorney

Law Office 112

kimberly.perry@uspto.gov

571-272-9208 (direct)

 

 

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 16, 2019 for

U.S. Trademark Application Serial No. 88524704

 

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. 

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Examining Attorney

Law Office 112

kimberly.perry@uspto.gov

571-272-9208 (direct)

 

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 16, 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.”