To: | Visier Solutions Inc. (DocketingGroup@tlgiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88582463 - OUTSMART - 0118-0007TM |
Sent: | November 26, 2019 08:30:41 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88582463
Mark: OUTSMART
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Correspondence Address: 8500 BLUFFSTONE COVE, SUITE A201
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Applicant: Visier Solutions Inc.
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Reference/Docket No. 0118-0007TM
Correspondence Email Address: |
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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 26, 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.
PRIOR PENDING APPLICATION ADVISORY
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.
SPECIMEN REFUSAL: SUBSTITUTE SPECIMEN REQUIRED
This refusal pertains only to the services identified in class 42.
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 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). A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See 15 U.S.C. § 1127; 37 C.F.R. §2.56(b)(2).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014.
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that the few references to software services in the specimen differ significantly from what the applicant identifies in class 42. That is, the analytical business software referenced in the specimen is not software for arranging, organizing, and conducting business events.
Applicant should also note that the screenshots showing a mobile application bearing the mark appear to be the same as those submitted for the class 9 software goods. While acceptable for class 9, because the software appears to be downloadable, the same specimen does not show the software services identified in class 42, which are non-downloadable and temporary in nature. The only other references to software are associated with the mark “VISIER”, as “OUTSMART” only appears in connection with the referenced event. The large amount of irrelevant content included in the specimen makes any reference to software less apparent than they might otherwise be—the applicant should tailor its substitute specimen to highlight only directly relevant content.
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 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 the response options above and instructions on how to satisfy them using the Trademark Electronic Application System (TEAS) response form, see the Specimen webpage.
IDENTIFICATION OF GOODS AND SERVICES
Some of the wording in the identification of goods and services is indefinite and must be clarified because the nature of the goods and services is unclear, the wording is too broad, and the goods and services could be in more than one class and/or is misclassified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. Applicant must also amend the identification to specify the common commercial or generic name of the services. 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.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.
The wording “including the provision of promotional and informational e-mails, web advertisements, website registration, printed materials” in class 41 is misclassified in part and must be clarified, as promotional and advertising services are properly classified in class 35. See below.
If the services identified as “providing executable applications and websites with information regarding business conferences, seminars, and programs regarding business analytics applications and business planning applications” are purely informational services, they must be amended to that the nature of the services is clear. Further, these services must be amended to the appropriate class, as providing information generally falls in the same class as the subject matter of the information, which is in class 35 here.
Applicant may adopt the following wording, if accurate:
Class 9: Downloadable computer software for {specify the particular function of the software in class 9, e.g., tracking and managing events} for use with arranging, organizing, and conducting business conferences, seminars, and programs regarding business analytics applications and business planning applications
Class 35: Arranging, organizing, and conducting business conferences, seminars, and program events (events) regarding business analytics applications and business planning applications, including the provision of promotional and informational
e-mails, web advertisements, website registration, printed materials, and signage at the events; providing business information to websites and executable software applications
regarding business conferences, seminars, and programs regarding business analytics applications and business planning applications; advertising and promotional services, namely,
providing promotional e-mails and web advertisements in connection with arranging, organizing, and conducting educational conferences, seminars, and program events
Class 41: Arranging, organizing, and conducting educational conferences, seminars, and program events (events) in the field of {indicate subject matter or field, e.g., business analytics}, including the provision of educational promotional and informational e-mails, web advertisements, website registration, printed materials, and signage at the
events
Class 42: Software as a service (SAAS) services featuring software for the
arranging, organizing, and conducting of business conferences, seminars, and programs regarding business analytics applications and business planning applications.
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.
ASSISTANCE
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.
/Jonathan Ryan O'Rourke/
Examining Attorney
Law Office 104
United States Patent & Trademark Office
571-270-1561
jonathan.orourke@uspto.gov
RESPONSE GUIDANCE