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 17,
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 16, 2019, the examining attorney and G. Roxanne Elings 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 UNACCEPTABLE
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 provide 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 or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the software identified in the
application or amendment to allege use. 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.
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/or 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
The identification of goods is amended to read as follows: “Downloadable computer software for cybersecurity, detecting and mitigating network attacks using artificial intelligence, machine learning and/or deep learning; downloadable computer software for continuous monitoring, identifying, verifying, analyzing, comparing, classifying, sorting and scoring of collected or acquired data from network
traffic, network communication, network flow data, and network intercommunication using artificial intelligence, machine learning and/or deep learning; downloadable computer
software for providing initiation, distribution, delivery and response tracking of emergency notifications to users via personal communication devices and public mass communication devices; downloadable computer software for supporting exchange of information and collaboration processes amongst organizations and people during emergency and crisis situations; downloadable computer software for the purposes of data collection, monitoring, and mass notification services for managing emergency, and crisis and business critical situations and
improving crisis communications capability; downloadable computer software for the secure transmission of mass notification emergency information via audio, video and electronic
communications networks and devices, including social networks; downloadable computer software for managing and analyzing data feeds and data inputs in the field of crisis
reporting, communication and management, and for sending notifications through multiple IP network channels and delivery services; downloadable computer software for loading
data from personnel directories, and managing users for purpose of crisis communication; downloadable computer software for managing organization directories and connections
across organizations for the purpose of connecting them and facilitating collaboration before, during and after crisis situations; downloadable computer software for locating
personnel for security and safety purposes using a global positioning system, user self-reporting, and other locating means; downloadable
computer software for electronically monitoring, detecting and reporting on alarms, alerts, emergencies, hazards, security threats, and dangerous weather; downloadable
computer software for notifying individuals and organizations of a changed status or condition of a sensing device or input feed via network based message alerts; downloadable software in the
nature of a mobile application for sending, receiving, confirming and responding to alerts, messages, and notifications via wireless communications networks or the Internet; downloadable computer software in the nature of desktop software applications for providing desktop notifications that capture the user's attention with audio-visual signals and allow
users to confirm, respond to notifications or receive additional information related to notifications; downloadable computer software for use in threat prevention, detection,
investigation, response, remediation and analysis for computers, computer systems, servers, computer networks, endpoints, mobile devices, enterprise of things (EOT) and internet of things (IoT)
enabled devices; computer software for managing computer network endpoint security and predicting and monitoring security threats to computer networks; downloadable computer
operating system programs; downloadable computer software for performing data security functions in the field of cryptographic network security; downloadable computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used
for authentication or encryption of digital communications over the Internet and other computer networks; downloadable computer software, namely, encryption software to enable
secure transmission of digital information; downloadable computer software to integrate managed security, namely, virtual private network (VPN), public key infrastructure (PKI),
digital certificate issuance, verification and management; cloud computing software; downloadable Internet of things (IOT) management software
platform consisting of downloadable cloud-based software, mobile and desktop applications, and premise-based gateway agent software; downloadable computer software for use in
managing device-to-device, device-to-cloud and cloud-to-device communications; downloadable computer software for machine-to-machine (M2M) communication, remote data collection
and process control; downloadable computer software for asset tracking; downloadable computer software to track and manage IP-enabled machines and other
connected devices; downloadable software Development Kits (SDKs), Application Programming Interface (API) software, and Enterprise
Application Integration (EAI) software for creating software and applications related to machine to machine (M2M) devices, network and Internet connected devices, and IOT devices; downloadable computer software for sending, receiving and analyzing data from network and Internet-connected devices; downloadable computer software, namely,
software and middleware used to allow software applications to interface with mobile and remote devices and to allow connectivity, memory storage, and device management, all via a computer network;
downloadable computer software and hardware for fleet asset tracking in the transportation industry; downloadable computer software and hardware for tracking
and managing IP-enabled machines; downloadable computer software and hardware to collect, filter and process electronic data, namely, audio, voice, video, images, text,
electronic mail and messaging, documents, and vehicle and driver telematics and analytics concerning driver behavior, vehicle diagnostics, maintenance, performance, location, and downtime; downloadable computer software systems for use in dispatch, video monitoring, driver compliance, driver performance, driver scorecards, document management, trailer tracking, asset
tracking, vehicle tracking, telematics, fuel economy tracking, driver workflow, integrations with third party software, vehicle utilization, temperature tracking, vehicle inspection reports; mobile
phones, smart phones, tablet computers and wireless communication devices for voice, data, or image transmission; accessories for mobile phones, smart phones, tablet computers
and wireless communication devices, namely, headsets and earphones, phone chargers, battery chargers, mounts, cradles and holders for hands-free phone use, charging and docking stations, cell phone
and tablet computer protective cases, protective covers and cases for handheld electronic devices, cell phone holsters, and speakers; downloadable computer software for mobile phones, portable media players, and handheld computers, namely, software for sending digital photos, videos, images, and text to others via the
global computer network; downloadable computer software in the fields of Mobile Device Management (MDM), Mobile Applications Management (MAM),
Mobile Security Management (MSM), Mobile Information Management (MIM), and mobile Identity and Access Management (IAM); downloadable computer software to allow network
administrators to monitor, manage, and quarantine devices that are granted access to a network” See TMEP §§1402.01, 1402.01(e).
RESPONSE GUIDELINES
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.
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.
/Nathaniel Pettican/
Nathaniel Pettican
Examining Attorney
Law Office 108
(571) 272-1087
nathaniel.pettican@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.