To: | Calgary Scientific Inc. (docketing@mcciplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88532909 - PUREWEB - 10172-812US1 |
Sent: | October 18, 2019 12:48:26 PM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88532909
Mark: PUREWEB
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Correspondence Address: |
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Applicant: Calgary Scientific Inc.
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Reference/Docket No. 10172-812US1
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: October 18, 2019
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.
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 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).
However, applicant must address the following refusal(s) and/or requirement(s):
SUMMARY OF ISSUES:
SPECIMEN REFUSAL – INTERNATIONAL CLASS 42 ONLY
Specifically, the specimen for International Class 42 is described as: Website screen shot showing the mark used in association with a description of the services. Applicant’s services in International Class 42 are: Providing temporary use of on-line non-downloadable software, namely, software platform services for providing remote access to applications, content and data; software as a service supporting customized engineering, deployment and managed services; software as a service for sharing applications, content and data.
In particular, the webpage provided as a specimen for International Class 42 relates to applicant’s PureWebReality which is identified on the webpage in the text as a streaming service, namely, a fully managed scalable interactive streaming service. In particular, the text on the webpage further indicates that the project is rendered in the cloud and streamed to web browsers on any device. Streaming services are not the software services identified in International Class 42 in the application. Thus, the specimen does not show the applied-for mark in use in commerce in connection with any of the specific software services specified in International Class 42 in the application.
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 and/or services 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 services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
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 goods and/or services 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 http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION OF SERVICES – INTERNATIONAL CLASS 42 ONLY
The wording in the identification of services in International Class 42 only is indefinite and must be clarified because the wording does not make clear the exact nature of the services with enough specificity by common commercial or generic name for proper identification and classification of the services in this class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In particular, with respect to the first identification, applicant must use the wording “platform as a service featuring computer software platforms for..” which is the common commercial or generic name for the platform services. With respect to the second and third identifications which use the wording “software as a service”, applicant must clearly indicate the nature of the services as “software as a service services featuring software for….” to clearly identify the services by common commercial or generic name. In addition, the specific function of the software must be identified, and, if the software is content- or field- specific, the content or field of use. In particular, the functions related to the third identification of “supporting customized engineering, deployment and managed services” as described are unclear. Thus, applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
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 may substitute the following wording, if accurate:
Providing temporary use of on-line non-downloadable software, namely, platform as a service featuring computer software platforms for providing remote access to applications, content and data; software as a service (SAAS) services featuring software for use in customized engineering of (indicate function of software related to engineering), customized deployment (indicate function of software related to deployment), and customized management of (indicate function of software related to managed services); software as a service (SAAS) services featuring software for sharing applications, content and data, International Class 42.
ADVISORY: FAILURE TO RESPOND ABANDONMENT OF INTERNATIONAL CLASS 42
If applicant does not respond to this Office action within the six-month period for response, International Class 42 will be deleted from the application. The application will then proceed with International Class 43 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONDING TO THIS OFFICE ACTION
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.
How to respond. Click to file a response to this nonfinal Office action
/Brendan McCauley/
Brendan McCauley
Trademark Examining Attorney
Law Office 114
571-272-9459
Brendan.McCauley@USPTO.GOV
RESPONSE GUIDANCE