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 29, 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 applications may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

·       PRIOR FILED PENDING APPLICATIONS

·       IDENTIFICATION OF SERVICES AMENDMENT

·       CLARIFICATION REQUIRED – NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT

PRIOR FILED PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87198123 and 88225971 precede applicant’s filing date.  See attached referenced applications.  If one or more of 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 mark(s).  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.

 

IDENTIFICATION OF SERVICES AMENDMENT

 

The identification of services is indefinite and must be clarified because several of the services listed are unclear as to the specific nature, type, or purpose of the services being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must therefore clarify the identification as noted in bold below.

 

Applicant has classified “consultancy in the field of environmental management” in International Class 42 and “maintenance of computer hardware” in international class 42; however, the proper classification is class 35 for “consultancy in the field of environmental management” and class 37 for “maintenance of computer hardware”.  Therefore, applicant may respond by (1) adding International Classes 35 and 37 to the application and reclassifying these services in the proper international class, (2) deleting “consultancy in the field of environmental management” and “maintenance of computer hardware” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  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 requirements specified in this Office action.

 

Applicant may adopt the following identification, if accurate:

 

            Class 35

 

            Business Consultancy in the field of environmental management;

 

            Class 37

 

            Maintenance of computer hardware

 

            Class 42

 

providing on-line non-downloadable software for displaying and sharing a user's location and finding, locating, and interacting with other users; providing on-line  non-downloadable location-based software for {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; providing on-line  non-downloadable map-based software for {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; providing information relating to {specify type of information being provided e.g., development of} maps-driven and location-based software applications from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information network; providing information relating to {specify type of information being provided e.g., development of} software for use as an application programming interface (API) and to software development tools from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information networks; providing information relating to {specify type of information being provided e.g., development of} software applications for social networking services from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information networks; providing information relating to {specify type of information being provided e.g., development of} software applications for fitness and health services from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information networks; providing technical information in the field of computer software and software applications development from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information networks; providing technical information in the field of software development tools, API's (application program interface) and technical resources from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information networks; map creation services, namely, {Specify services of these types in class 42 e.g., mapping services}; software as a service (SAAS) services featuring software for viewing videos and photographs related to flight, subsea, geographical, topographical, cartographic, geo-spatial, vegetational and environmental survey data; architecture, engineering drawing and land and sea surveying; {specify type of services in class 42 e.g., scientific} laboratory services; soil and sea bed research; consultancy on soil and sea bed mechanics and foundation work, namely, {specify services of these types in class 42 e.g., consultancy regarding research in the field of soil and sea bed mechanics and foundation work}; geological and geotechnical services, namely, {Specify services of these types in class 42 e.g., geological research}; surveying services; photogrammetric and cartographic services; draughtsman services, namely, {Specify services of these types in class 42 e.g., engineering drawing services}; environmental research; development of computer hardware, development and maintenance of software and computer programming; information technology IT consulting services; research and consultancy services in the fields of environmental science, ecology, hydrology, petro physics and geosciences; research and consultancy services in the fields of mechanical, safety, fire and electrical engineering; services in the field of seismic surveys and inspections amongst others in the framework of oil and gas exploration and prospecting, namely, {Specify services of these types in class 42 e.g., seismic analysis services in the framework of oil and gas exploration and prospecting}; analysing seismic data; technical consultancy in the field of oil and gas exploration; consultancy, advisory and information services relating to all of the above mentioned services 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

CLARIFICATION REQUIRED – NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT

 

The application identifies services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

Multiple Class Application Requirements

 

The application identifies 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one 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.

 

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.    

 

ASSISTANCE

 

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. 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 29, 2019 for

U.S. Trademark Application Serial No. 88579356

 

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. 

 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 29, 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.”