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:  November 03, 2019

 

 

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.

 

 

SUMMARY OF ISSUES:

• Refusal Under Section 2(d) – Likelihood of Confusion
• ADVISORY: Prior-pending Applications – Mark Not Entitled to Register
• Identification of Goods and Services

 

 

SUPPLEMENTAL SEARCH ADVISORY

 

Applicant is advised that, due to the indefiniteness of the identification of goods and services, the examining attorney will conduct a supplemental search to determine whether additional registered marks require citation, should applicant respond to this Office action. 

 

 

 

Refusal Under Section 2(d) – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5665673 and 4699205.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is HARDHAT (in standard characters) for the following services: 

 

International Class 9:	Application software; Computer programmes (programs) and recorded software distributed online; Computer programs (downloadable software); Computer software; Computer software (programs); Computer software (recorded); Computer software applications (downloadable); Computer software designed to estimate costs; Computer software downloaded from the internet; Computer software for accounting systems; Computer software for analysing address files; Computer software for analysing market information; Computer software for authorising access to data bases; Computer software for business purposes; Computer software for processing address files; Computer software for processing market information; Computer software packages; Computer software products; Computer software programs; Computer software programs for database management; Computer software programs for spreadsheet management; Data communications software; Data processing software; Downloadable software applications (apps); Computer apparatus for remote billing; Computer programs for financial management; Computer programs for use in database management; Training guides in electronic format; Training manuals in electronic format; Computer documentation in electronic form; Data recorded electronically; Databases (electronic publications).
International Class 35:	Advice relating to marketing management; Business advice relating to marketing; Business consultancy services relating to marketing; Consultancy relating to marketing; Marketing advisory services; Marketing analysis; Marketing consultancy; Marketing management advice; Preparation of reports for marketing; Business analysis services; Advice relating to business management; Advice relating to commercial management; Advisory services for business management; Advisory services relating to business management; Business consultancy services relating to the supply of quality management systems; Business management advice; Business management advisory services; Business management and administration services supporting utilisation of a global computer network; Business management consultancy; Computerised database management; Computerised file management; Consultancy relating to business document management; Consultancy relating to business management; Data base management; Data management; Data management advice; Data management consultancy; Data scrubbing services (data management services); Database management; Advisory services relating to data processing; Business consultancy services relating to data processing; Business data analysis services; Consultancy relating to data processing; Data analysis; Data cleansing services (correcting or removing inaccurate or incomplete data from databases); Preparation of business reports; Preparation of commercial reports; Consultancy, information and advisory services relating to all of the aforesaid.
International Class 41:	Business training consultancy services; Business training services; Practical training (demonstration); Provision of training; Training; Advisory services relating to training; Arranging and conducting of workshops; Arranging professional workshop and training courses; Conducting training seminars; Conducting training workshops; Conducting workshops; Consultancy and information services relating to arranging, conducting and organisation of training workshops; Consultancy relating to arranging and conducting of training workshops; Consultancy services relating to the education and training of management and of personnel; Consultancy services relating to training; Education and training consultancy; Education and training in the field of business management; Education and training in the field of electronic data processing; Education and training services; Education, teaching and training; Organisation of training; Organisation of training courses; Providing courses of training; Providing information, including online, about education and training; Providing of training; Providing training; Provision of information relating to training; Provision of online training; Provision of training; Provision of training courses; Provision of training via a global computer network; Publication of educational and training guides; Publication of training manuals; Training courses in strategic planning relating to advertising, promotion, marketing and business; Training in the field of business management; Training services; Training services in the field of computer software development; Vocational education and training services; Vocational skills training; Vocational training services; Consultancy, information and advisory services relating to all of the aforesaid.
International Class 42:	Computer software consultancy; Computer software design; Computer software development; Computer software engineering; Design of computer software; Development of computer software; Development of computer software application solutions; Development of software; Hosting of software as a service (SaaS); Maintenance of computer software; Online provision of web-based software; Provision of online non-downloadable software (application service provider); Rental of computer software; Repair of computer software; Software as a service (SaaS); Platform as a service; Software creation; Software engineering; Updating of computer software; Upgrading of computer software; Writing of computer software; Providing temporary use of on-line non-downloadable software; Recovery of computer data; Consultancy, information and advisory services relating to all of the aforesaid.

 

The mark in Reg. No. 4699205 is HARD HAT LEADERSHIP (in standard characters) for “Leadership development training in the field of oil and gas” in International Class 41.

 

The mark in Reg. No. 5665673 is SOFTWARE FOR HARD HATS (in standard characters) for “Providing online non-downloadable construction software for on-site data collection, production tracking, data analytics and industry intelligence” in International Class 42.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

 

Similarity of the Marks

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

The respective marks, HARDHAT, SOFTWARE FOR HARD HATS, and HARD HAT LEADERSHIP, are highly similar in appearance, sound and meaning.  All share the common literal elements, “hard hat,” with minor spelling variations.  The only difference are that “HARDHAT” is a single word in the applicant’s mark, “HARD HATS” is plural in the mark in Reg. No. 5665673, and the registered marks have the additional wording “SOFTWARE FOR” and “LEADERSHIP.”

 

The difference in spacing between “HARDHAT,” “HARD HAT,” and “HARD HATS” does not obviate the similarity between the marks. The marks are virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

Additionally, the “HARD HATS” in Reg. No. 5665673 being plural does not obviate the similarity between the marks. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

Finally, the additional terms “SOFTWARE FOR” and “LEADERSHIP” in registrants’ marks, do not obviate the overall similarity between the marks.  Consumers, when encountering the marks HARDHAT, SOFTWARE FOR HARD HATS, and HARD HAT LEADERSHIP, are likely to be confused as to the source of the goods and services at issue, particularly when the goods and services are overlapping.

 

Thus, the applied-for mark is confusingly similar to the cited registration because the marks share the identical dominant literal element, which gives the marks the same commercial impression.

 

 

Relatedness of the Goods and/or Services

 

The applicant’s software and educational services are closely related to the registrants’ “Providing online non-downloadable construction software for on-site data collection, production tracking, data analytics and industry intelligence” and “Leadership development training in the field of oil and gas” because applicant’s services are broad enough to include the registrants’ services.

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “computer software,” “training,” and “education,” which presumably encompasses all services of the type described, including registrants’ more narrow “Leadership development training in the field of oil and gas” and “Providing online non-downloadable construction software for on-site data collection, production tracking, data analytics and industry intelligence.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrants’ services are legally identical in part.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

In summary, the applicant’s and registrant’s marks create the same commercial impression and the respective goods and services are highly related.   Therefore, consumers are likely to be confused and mistakenly believe that these goods and services originate from a common source.  Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. 

 

 

 

ADVISORY: Prior-pending Applications – Mark Not Entitled to Register

 

The filing date of pending U.S. Application Serial Nos. 88467948 and 88467933 precede applicant’s filing date.  See attached referenced applications.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

 

Identification of Goods and Services

 

The identification of goods and services must be amended because much of the wording is too broad or indefinite.  Additionally, the identification of goods and services uses parentheses.

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

The identification for “software” and “computer programs” in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).   

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Applicant must specify the format and the function or purpose of all of its software.

 

The wording “training guides in electronic format; training manuals in electronic format; computer documentation in electronic format” in the identification of goods is indefinite and must be clarified because the nature of the goods and the manner that they are recorded is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: “downloadable electronic publications in the nature of {specify publication, e.g., training manuals} for {specify area of use or subject matter}.”

 

The wording “Data recorded electronically” in the identification of goods is indefinite and must be clarified because the matter recorded and the goods on which they are recorded are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Pre-recorded USB flash drives featuring {indicate subject matter}.”

 

The wording “databases (electronic publications)” in the identification of goods is indefinite and must be clarified because it is unclear whether these goods are downloadable or recorded, and the subject matter of the databases is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Downloadable databases in the field of {indicate subject matter, e.g., sports statistics, annual rainfall statistics, etc.}.”

 

The wording “preparation of reports for marketing” in the identification of services is indefinite and must be clarified because the type of reports are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “provision of marketing reports.”

 

The wording “business analysis services” in the identification of services is indefinite and must be clarified because the business matter analyzed is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “business management analysis.”

 

The wording “Consultancy relating to business document management” in the identification of services is indefinite and must be clarified because the nature of business document management is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If “document management” is actually “computer file management,” applicant must so specify.

 

The wording “data management” in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “database management.”

 

The wording “data analysis” in the identification of services is indefinite and must be clarified because the type of data analyzed is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “business data analysis.”

 

The wording “Data cleansing services (correcting or removing inaccurate or incomplete data from databases)” in the identification of services is indefinite and must be clarified because the type of services provided is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “database management.”

 

Applicant’s “education” and “training” services in the identification of services is indefinite and must be clarified because the subject matter of the services is unclear, and the modes of instruction for the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Training services in the field of {indicate field or subject matter}” and “Educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the fields of {indicate subject matter or fields of educational activity}.”

 

The wording “Development of computer software application solutions” in the identification of services is indefinite and must be clarified because the purpose of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If these services are “for the purpose of testing of electronic components and electronic systems,” applicant must so specify.

 

The wording “web-based software,” “online non-downloadable software,” “software as a service” and “platform as a service” in the identification of services is indefinite and must be clarified because the type of software provided and the function of the software are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the type of software provided and the function of the software, e.g., “Providing temporary use of on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}.”

 

To address the issues discussed above, applicant may adopt any or all of the following identification of goods, if accurate.  Suggested changes are indicated in bold, strikethrough, and underlined fonts.  If adding international classes, applicant must follow the multiple-class application requirements detailed below:

 

International Class 9:	Application software; Computer programmes (programs) and recorded software distributed online; Computer programs (downloadable software); Computer software; Computer software (programs); Computer software (recorded); Computer software applications (downloadable); Computer software designed to estimate costs; Computer software downloaded from the internet; Computer software for accounting systems; Computer software for analysing address files; Computer software for analysing market information; Computer software for authorising access to data bases; Computer software for business purposes; Computer software for processing address files; Computer software for processing market information; Computer software packages; Computer software products; Computer software programs; Computer software programs for database management; Computer software programs for spreadsheet management; Data communications software; Data processing software; Downloadable software applications (apps); Computer apparatus for remote billing; Computer programs for financial management; Computer programs for use in database management {specify format of software, either “downloadable” or “recorded,” and purpose of function of software, e.g., “for database management,” for each software entry}; Training guides in electronic format downloadable electronic publications in the nature of training guides for {specify area of use or subject matter}; Training manuals in electronic format downloadable electronic publications in the nature of training manuals for {specify area of use or subject matter}; Computer documentation in electronic form downloadable electronic publications in the nature of {specify type of publication} for {specify area of use or subject matter}; Data recorded electronically Pre-recorded USB flash drives featuring {indicate subject matter}; Databases (electronic publications) Downloadable databases in the field of {indicate subject matter, e.g., sports statistics, annual rainfall statistics, etc.}.
International Class 35:	Advice relating to marketing management; Business advice relating to marketing; Business consultancy services relating to marketing; Consultancy relating to marketing; Marketing advisory services; Marketing analysis; Marketing consultancy; Marketing management advice; Preparation of reports for marketing provision of marketing reports; Business analysis services business management analysis; Advice relating to business management; Advice relating to commercial management; Advisory services for business management; Advisory services relating to business management; Business consultancy services relating to the supply of quality management systems; Business management advice; Business management advisory services; Business management and administration services supporting utilisation of a global computer network; Business management consultancy; Computerised database management; Computerised file management; Consultancy relating to business document management computer file management of business documents; Consultancy relating to business management; Data base management; Data management; Data management advice; Data management consultancy database management advice and consultancy; Data scrubbing services (data management services) database management services in the nature of data scrubbing; Database management; Advisory services relating to data processing; Business consultancy services relating to data processing; Business data analysis services; Consultancy relating to data processing; Business data analysis; Data cleansing services (correcting or removing inaccurate or incomplete data from databases) database management services in the nature of data cleansing, namely correcting or removing inaccurate or incomplete data from databases; Preparation of business financial reports for business or commercial purposes; Preparation of commercial reports; Consultancy, information and advisory services relating to all of the aforesaid.
International Class 41:	Business training consultancy services; Business training services; Practical training (demonstration); Provision of training; Training Training services in the field of {indicate field or subject matter}; Advisory services relating to training; Arranging and conducting of workshops in the fields of {indicate subject matter or fields of educational activity}; Arranging professional workshop and training courses; Conducting training seminars; Conducting training workshops; Conducting workshops Educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the fields of {indicate subject matter or fields of educational activity}; Consultancy and information services relating to arranging, conducting and organisation of training workshops; Consultancy relating to arranging and conducting of training workshops; Consultancy services relating to the education and training of management and of personnel; Consultancy services relating to training; Education and training consultancy; Education and training in the field of business management; Education and training in the field of electronic data processing; Education and training services; Education, teaching and training; Organisation of training; Organisation of training courses; Providing courses of training Educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the fields of {indicate subject matter or fields of educational activity}; Providing information, including online, about education and training; Providing of training; Providing training Training services in the field of {indicate field or subject matter}; Provision of information relating to training; Provision of online training; Provision of training; Provision of training courses; Provision of training via a global computer network Training services in the field of {indicate field or subject matter}; Publication of educational and training guides; Publication of training manuals; Training courses in strategic planning relating to advertising, promotion, marketing and business; Training in the field of business management; Training services in the field of {indicate field or subject matter}; Training services in the field of computer software development; Vocational education and training services; Vocational skills training; Vocational training services Training services in the field of {indicate field or subject matter}; Consultancy, information and advisory services relating to all of the aforesaid.
International Class 42:	Computer software consultancy; Computer software design; Computer software development; Computer software engineering; Design of computer software; Development of computer software; Development of computer software application solutions for the purpose of testing of electronic components and electronic systems; Development of software; Hosting of software as a service (SaaS); Maintenance of computer software; Online provision of web-based software Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}; Provision of online non-downloadable software (application service provider) Application service provider (ASP) featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}; Rental of computer software; Repair of computer software; Software as a service (SaaS) Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}; Platform as a service Platform as a service (PAAS) featuring computer software platforms for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}; Software creation; Software engineering; Updating of computer software; Upgrading of computer software; Writing of computer software; Providing temporary use of on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}; Recovery of computer data; Consultancy, information and advisory services relating to all of the aforesaid.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

 

 

Responding to this Office Action

 

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.

 

 

 

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  

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@uspto.gov

 

 

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 November 03, 2019 for

U.S. Trademark Application Serial No. 88549209

 

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. 

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@uspto.gov

 

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 November 03, 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.”