To: | The Fibersmith Company (dsmith@fibersmith.co) |
Subject: | U.S. Trademark Application Serial No. 88556111 - VISION - N/A |
Sent: | November 01, 2019 03:02:28 PM |
Sent As: | ecom113@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88556111
Mark: VISION
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Correspondence Address:
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Applicant: The Fibersmith Company
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Reference/Docket No. N/A
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: November 01, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS – NO CONFLICTING MARKS FOUND
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
(1) Amendment of Identification of Services Required
AMENDMENT OF IDENTIFICATION OF SERVICES REQUIRED
The identification of services in International Class 42 must be clarified because the wording “Software as a service (SAAS) services, namely, hosting software for use by others for use in telecommunications services. This will be software used by telecom, video and data providers known as a BSS/OSS (Business Support System. Operational Support System that will include billing, customer support, accounting, continuing plant records, auto provisioning of hardware and software, as well as geo-referencing, geo-location, and other direct location access methods to track, maintain and troubleshoot networks and systems” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. Applicant must clearly specify the function of the software.
Also, applicant has filed this application under Section 1(a). This means that applicant claims to be using the mark in commerce. Language such as “This will be software,” should not be included in the identification of services. Applicant should therefore delete this wording and incorporate all of the wording that follows it into the identification of services appropriately.
Specific guidance for all requirements has been provided below.
Applicant may adopt the following wording, if accurate:
42 Software as a service (SAAS) services, namely, hosting software for use by others, namely, telecom, video and data providers for use {specify the function of the programs, e.g., BSS/OSS (Business Support System and Operational Support System)
that performs billing, customer support functions, accounting functions, continuing plant records functions, auto provisioning of hardware and software, and uses geo-referencing, geo location, and
other direct location access methods to track, maintain and troubleshoot networks and systems} in the field of telecommunications services. This will be software used by
telecom, video and data providers known as a BSS/OSS (Business Support System. Operational Support System that will include billing, customer support, accounting, continuing plant records, auto
provisioning of hardware and software, as well as geo-referencing, geo-location, and other direct location access methods to track, maintain and troubleshoot networks and systems
Stylized wording indicates changes.
These suggestions are merely illustrative, not exhaustive of all the types of services and proper classifications thereof which applicant might have intended to identify. These suggestions are based upon the examining attorney’s review of the application and determination of some of the services applicant is most likely to offer. If applicant intended to identify services other than those suggested above, applicant must so specify and classify these services accordingly.
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 WISH TO SEEK TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
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
/Dana Dickson/
Dana Dickson
Examining Attorney
Law Office 113
571.270.7552
Dana.Dickson@USPTO.gov
RESPONSE GUIDANCE