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 14, 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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in prior-filed pending applicationss may present a bar to registration of applicant’s mark.

 

 

SUMMARY OF ISSUES:

• Advisory - Potential Section 2(d) Refusal Based Upon Prior-Filed Applications
• Requirement to Amend Classification/Identification of Goods and Services

 

ADVISORY - POTENTIAL SECTION 2(d) REFUSAL BASED UPON PRIOR-FILED APPLICATIONS

 

 

The filing dates of pending U.S. Application Serial Nos. 88147642, 88147674 and 88147686 precede applicant’s filing date.  See attached referenced applications:

 

Serial No.	MARK	OWNER	RELEVANT GOODS AND/OR SERVICES	CLASS
88147642	POINT OF USE, TIME OF NEED	Moog Inc.	Computer software, networking hardware, and downloadable cloud computing software, all the foregoing for use in authenticating, tracking, certifying and protecting the integrity of additive manufactured products Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents	9                 42
88147674	POINT OF USE, TIME OF NEED SUPPLY CHAIN	Moog Inc.	Computer software, networking hardware, and downloadable cloud computing software, all the foregoing for use in authenticating, tracking, certifying and protecting the integrity of additive manufactured products Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents	9                 42
88147686	POINT OF USE, TIME OF NEED DIGITAL SUPPLY CHAIN	Moog Inc.	Computer software, networking hardware, and downloadable cloud computing software, all the foregoing for use in authenticating, tracking, certifying and protecting the integrity of additive manufactured products Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents	9                 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).  Thus, if the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered 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 applications.

 

 

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 marks in the referenced applications.  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.

 

 

However, if applicant responds to present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications, applicant also must respond to the requirement set forth below.

 

 

 

REQUIREMENT TO AMEND CLASSIFICATION/IDENTIFICATION OF GOODS AND SERVICES

 

Applicant has classified the following goods and/or services in International Class 9:  “Near field communication (NFC) tags and devices for tracking products, making mobile payments and providing advertising information; blank near-field communication (NFC) technology-enabled tags for tracking information within a network; NFC readers; radio-frequency identification (RFID) tags and devices; RFID readers; radio-frequency identification tags for tracking information within a network; providing maintenance of on-line databases for others featuring information regarding wireless electronic retrieval of data via near field communication (NFC) technology-enabled devices and RFID technology-enabled devices; Technology-related consultation services regarding the development of software and NFC and RFID technology-enabled hardware for retrieving electronic information ; software as a service (SAAS) services featuring software in the form of push notifications for alerting the public about product recalls; technical support services, namely, monitoring of network systems, servers and web and database applications for product recalls and notification of related events and alerts”. However, the proper classification for each item is as follows:

 

International Class 9: Near field communication (NFC) tags and devices for tracking products, making mobile payments and providing advertising information; blank near-field communication (NFC) technology-enabled tags for tracking information within a network; NFC readers; radio-frequency identification (RFID) tags and devices; RFID readers; radio-frequency identification tags for tracking information within a network

 

International Class 42: providing maintenance of on-line databases for others featuring information regarding wireless electronic retrieval of data via near field communication (NFC) technology-enabled devices and RFID technology-enabled devices; Technology-related consultation services regarding the development of software and NFC and RFID technology-enabled hardware for retrieving electronic information ; software as a service (SAAS) services featuring software in the form of push notifications for alerting the public about product recalls; technical support services, namely, monitoring of network systems, servers and web and database applications for product recalls and notification of related events and alerts

 

Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international classes to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international classes for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

 

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.

 

 

MULTIPLE CLASS APPLICATION ADVISORY

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

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

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

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  

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@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 14, 2019 for

U.S. Trademark Application Serial No. 88572403

 

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. 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@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 14, 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.”