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 30, 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 OF OFFICE’S DATABASE OF MARKS

 

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:

• Specimen Refusal – Mark Not Shown Used in Association with Goods
• Amended Identification of Goods Required
• Multiple-Class Application Requirements

 

SPECIMEN REFUSAL – MARK NOT SHOWN USED IN ASSOCIATION WITH GOODS

 

Registration is refused because the specimen in International Class 9 is not acceptable as a display associated with downloadable software and appears to be mere advertising material; thus, the specimen fails to show the applied-for mark in use in commerce for that international class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Specifically, the specimen fails to provide the means to enable the user to download or purchase the software from the website because there is no option for users to download or purchase the goods at all.  See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(e), (i) et seq.  Without this feature, the specimen is mere advertising material, which is not acceptable as a specimen to show use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.04(b), (c).

 

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 goods 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). 

 

Examples of specimens for downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program.  See TMEP §904.03(e), (i), (j).  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.

 

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 software 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 both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.  

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

In this case, it appears that applicant used semicolons instead of commas, creating incomplete series of distinct categories of goods and services.  Consequently, applicant must clarify the following wording in the identification of goods and services in International Classes 9 and 42 because they are indefinite and too broad, and could identify goods and services in more than one class:

• The wording, “for cities to promote and document sustainable waste recycling practices among their commercial businesses and multi-family complexes” is indefinite because it only identifies the use of goods or services, but does not indicate what the actual goods or services are.  Further, this wording could identify recorded computer software platforms for the sharing of data related to customer compliance with regulatory requirements related to waste recycling for cities to promote and document sustainable waste recycling practices among their commercial businesses and multi-family complexes in International Class 9, and public opinion surveys for cities to promote and document sustainable waste recycling practices among their commercial businesses and multi-family complexes in International Class 35;
• The wording, “for public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance” is indefinite because it only identifies the use of goods or services, but does not indicate what the actual goods or services are.  Further, this wording could identify recorded computer software platforms for the sharing of data related to customer compliance with regulatory requirements related to waste recycling for public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance in International Class 9, and software as a service (SAAS) services featuring software for use by municipalities, local government agencies, waste haulers, and outreach contractors for the sharing of data related to monitoring and maintaining customer compliance with regulatory requirements related to waste recycling for the purpose of public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance in International Class 42;
• The wording, “for cities to promote and document sustainable waste recycling practices among their commercial businesses” is indefinite because it only identifies the use of goods or services, but does not indicate what the actual goods or services are.  Further, this wording could identify downloadable cloud-computing software for the sharing of data related to customer compliance with regulatory requirements related to waste recycling for cities to promote and document sustainable waste recycling practices among their commercial businesses in International Class 9, public opinion surveys for cities to promote and document sustainable waste recycling practices among their commercial businesses in International Class 35, and cloud computing featuring software for use by municipalities, local government agencies, waste haulers, and outreach contractors for the sharing of data related to customer compliance with regulatory requirements related to waste recycling for the purpose of allowing cities to promote and document sustainable waste recycling practices among their commercial businesses in International Class 42;
• The wording, “and for reviewing data, analyzing the data in connection with laws and regulations, and preparing compliance reports” is indefinite because it only identifies the use of goods or services, but does not indicate what the actual goods or services are.  Further, this wording could identify providing temporary use of a web-based software application for use by municipalities, local government agencies, waste haulers, and outreach contractors for the sharing of data related to monitoring and maintaining customer compliance with regulatory requirements related to waste recycling for reviewing data, analyzing the data in connection with laws and regulations, and preparing compliance reports in International Class 42, and legal consultation services for reviewing data, analyzing the data in connection with laws and regulations, and preparing compliance reports in International Class 45; and
• The wording, “and for reviewing recycling data, analyzing the data in connection with laws and regulations and preparing reports” is indefinite because it only identifies the use of goods or services, but does not indicate what the actual goods or services are.  Further, this wording could identify downloadable computer software for the collection, editing, organizing, modifying, transmission, storage, and sharing of data and information for reviewing recycling data, analyzing the data in connection with laws and regulations and preparing reports in International Class 9, and cloud computing featuring software for use by municipalities, local government agencies, waste haulers, and outreach contractors for the sharing of data related to customer compliance with regulatory requirements related to waste recycling for reviewing recycling data, analyzing the data in connection with laws and regulations and preparing reports in International Class 42.

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

Additionally, applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 9 for “for cities to promote and document sustainable waste recycling practices among their commercial businesses and multi-family complexes; . . . ; for public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance; . . . .,” and services in International Class 42 for “for public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance; . . . ; for cities to promote and document sustainable waste recycling practices among their commercial businesses; . . . ; and for reviewing data, analyzing the data in connection with laws and regulations, and preparing compliance reports . . . .”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

Applicant may substitute the following wording, if accurate:

 

International Class 9:  Computer software for municipalities, local government agencies, waste haulers, and outreach contractors to manage, monitor, report and conduct enforcement efforts related to waste recycling that may be downloaded from a global computer network; Computer software platforms, recorded, for the sharing of data related to customer compliance with regulatory requirements related to waste recycling to be used by cities to promote and document sustainable waste recycling practices among their commercial businesses and multi-family complexes, and by public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance; Downloadable cloud-computing software for the sharing of data related to customer compliance with regulatory requirements related to waste recycling for use by cities to promote and document sustainable waste recycling practices among their commercial businesses and multi-family complexes, and for use by public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance; Recorded computer software for reviewing waste recycling data, analyzing the data in connection with recycling laws and regulations, and preparing compliance reports.

 

International Class 42:  Software as a service (SAAS) services featuring software for use by municipalities, local government agencies, waste haulers, and outreach contractors for the sharing of data related to monitoring and maintaining customer compliance with regulatory requirements related to waste recycling and for reviewing data, analyzing the data in connection with laws and regulations, and preparing compliance reports for the purpose of cities to promote and document sustainable waste recycling practices among their commercial businesses, and for the purpose of public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance; Application service provider (ASP) featuring software for use by municipalities, local government agencies, waste haulers, and outreach contractors to manage, monitor, report and conduct enforcement efforts related to waste recycling; Cloud computing featuring software for use by municipalities, local government agencies, waste haulers, and outreach contractors for the sharing of data related to customer compliance with regulatory requirements related to waste recycling for the purpose of allowing cities to promote and document sustainable waste recycling practices among their commercial businesses, for the purpose of allowing public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance, and for the purpose of reviewing recycling data, analyzing the data in connection with laws and regulations and preparing reports; Computer services, namely, acting as an application service provider in the field of information management to host computer application software for the purpose of enabling municipal agencies to ensure that their commercial businesses and multi-family complexes maintain compliance with regulatory requirements related to waste recycling and for reviewing data, analyzing the data in connection with laws and regulations, and preparing compliance reports; Platform as a service (PAAS) featuring computer software platforms for municipalities and local governmental agencies to manage, monitor, report and conduct enforcement efforts related to waste recycling; Providing a website featuring resources, namely, non-downloadable software for the sharing of data related to compliance with regulatory requirements related to waste recycling for the purpose of allowing cities to promote and document sustainable waste recycling practices among their commercial businesses, and for the purpose of allowing public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance;  Providing temporary use of a web-based software application for use by municipalities, local government agencies, waste haulers, and outreach contractors for the sharing of data related to monitoring and maintaining customer compliance with regulatory requirements related to waste recycling for the purpose of allowing cities to promote and document sustainable waste recycling practices among their commercial businesses, for the purpose of allowing public agencies to document exemptions and potential violations of regulatory requirements and to generate customer-specific letters of non-compliance, and for the purpose of allowing of reviewing data, analyzing the data in connection with laws and regulations, and preparing compliance reports; Providing temporary use of non-downloadable cloud-based software for municipalities and local governmental agencies to manage, monitor, report and conduct enforcement efforts related to waste recycling.

 

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

 

The application references goods and services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

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

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class 42; and applicant needs a specimen for classes 9, 35, and 45.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

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

 

Response guidelines 

 

For this application to proceed, applicant must explicitly address each refusal and 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.

 

TELEPHONE/E-MAIL FOR CLARIFICATION

 

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 or requirements 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.    

 

 

/G. Iñaki Liñero Guarda/

G. Iñaki Liñero Guarda

Examining Attorney

Law Office 127

(571)270-1783

Gerardo.LineroGuarda@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 30, 2019 for

U.S. Trademark Application Serial No. 88586256

 

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. 

 

 

/G. Iñaki Liñero Guarda/

G. Iñaki Liñero Guarda

Examining Attorney

Law Office 127

(571)270-1783

Gerardo.LineroGuarda@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 30, 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.”