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:  August 13, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on November 26, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, applicant must amend the mark description.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.

 

In a previous Office action dated November 22, 2019, applicant was required to satisfy the following requirements:  amend the identification of goods and satisfy the multi-class application requirements

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: satisfy the multi-class application requirements.  See TMEP §§713.02, 714.04. 

 

 

SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE: Mark Description
• MAINTAINED AND CONTINUED: Identification of Goods and Services Requires Amendment

 

MARK DESCRIPTION

 

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing and thus is inaccurate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

The amended color claim and description> must specify all the colors in the drawing of the mark, using generic color names, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is suggested, if accurate:

 

 

Description:  “The mark consists of a leftmost large navy blue hexagon with a white spade centered in the middle of the hexagon, three smaller hexagons indented into the upper right side of the navy blue hexagon, and the following colors on each of the hexagons clockwise from the leftmost: orange, baby blue, and lime green. To the right of the navy blue hexagon with the white spade in the middle and three smaller indented hexagons is the word "ACE" in navy blue.”

 

For more information about drawings and instructions on how to submit a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT

 

In response to this requirement, applicant has submitted an amended identification of goods and services. However, for the reasons set forth below, a portion of the amended identification of goods and services is unacceptable and this requirement is maintained and continued.

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows:  “Electronic Quality Management System Workflow Engine Software and Services for Pharmaceutical and Medical Devices, and Manufacturing Quality Assurance Operations.”

 

However, the proposed amendment identifies the following goods and/or services:  “Electronic Quality Management System comprised primarily of downloadable Workflow Engine Software for real-time tracking, management, and reporting of technical and regulatory compliance with standards and government agencies, quality assurance, and monitoring operational activities; Recorded and downloadable software for use in business process monitoring, analyses, and development; Learning management system comprised primarily of recorded and downloadable software for use in the administration, documentation, tracking, reporting, and delivery of educational courses, training programs, and learning and development programs for Pharmaceutical and Medical Devices” in Class 9 and “Software as a service (SAAS) services featuring workflow engine software for use as an Electronic Quality Management System for providing real-time tracking, management, and reporting of technical and regulatory compliance with standards and government agencies, quality assurance, and monitoring operational activities; Software as a service (SAAS) services featuring software for use as a learning management system providing administration, documentation, tracking, reporting, and delivery of educational courses, training programs, and learning and development programs; Software as a service (SAAS) services featuring software for use in business process monitoring, analyses, and development; Software as a service (SAAS) services featuring software for use in business process implementation, business workflow configuration and business process validation for pharmaceutical and medical devices; Services for Pharmaceutical and Medical Devices, namely, providing Quality Assurance services in the field of manufacturing of pharmaceutical and medical devices” in Class 42. 

 

The following portions of the proposed amendment is beyond the scope of the original identification: “Learning management system comprised primarily of recorded and downloadable software for use in the administration, documentation, tracking, reporting, and delivery of educational courses, training programs, and learning and development programs for Pharmaceutical and Medical Devices” in Class 9 and “Software as a service (SAAS) services featuring software for use as a learning management system providing administration, documentation, tracking, reporting, and delivery of educational courses, training programs, and learning and development programs; Software as a service (SAAS) services featuring software for use in business process monitoring, analyses, and development; Software as a service (SAAS) services featuring software for use in business process implementation, business workflow configuration and business process validation for pharmaceutical and medical devices; Services for Pharmaceutical and Medical Devices, namely, providing Quality Assurance services in the field of manufacturing of pharmaceutical and medical devices” in Class 42. This wording exceeds the scope of the original identification because it includes an additional type of software and service (i.e., learning management software, business implementation, workflow configuration, and validation software, and quality assurance services) that was not included in the original identification.

 

Suggested Amended Wording

 

Applicant may adopt the following:

 

Class 9: Electronic Quality Management System comprised primarily of downloadable Workflow Engine Software for real-time tracking, management, and reporting of technical and regulatory compliance with standards and government agencies, quality assurance, and monitoring operational activities

 

Class 42: Software as a service (SAAS) services featuring workflow engine software for use as an Electronic Quality Management System for providing real-time tracking, management, and reporting of technical and regulatory compliance with standards and government agencies, quality assurance, and monitoring operational activities

 

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.

 

RESPONSE OPTIONS

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Caroline L. Moran

/Caroline L. Moran/

Trademark Examining Attorney

Law Office 125

(571) 272-3255

caroline.moran@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 August 13, 2020 for

U.S. Trademark Application Serial No. 88585204

 

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. 

 

 

Caroline L. Moran

/Caroline L. Moran/

Trademark Examining Attorney

Law Office 125

(571) 272-3255

caroline.moran@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 August 13, 2020, 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.”