To: | IRESS Limited (trademarks@fbtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88587770 - IRESS - N/A |
Sent: | November 21, 2019 06:02:47 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88587770
Mark: IRESS
|
|
Correspondence Address: 201 NORTH ILLINOIS STREET, SUITE 1900
|
|
Applicant: IRESS Limited
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 21, 2019
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
· REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES
· ADVISORY – §1(B) & §44(D) INTENT TO PERFECT §44(E)
REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify some of the wording in the identification of goods and/or services because it is indefinite and/or overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods and/or services. In addition, some of the goods and/or services appear to be misclassified.
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.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Applicant included the wording “including”. Pursuant to TMEP 1402.03(a), the terms "including," "comprising," "such as," "and the like," "and similar goods," "products," "concepts," "like services" and other indefinite terms and phrases are almost always unacceptable. Consequently, the wording “including” has been deleted and replaced by "namely," "consisting of," "particularly," or "in particular".
Applicant included the wording “in this class”. Pursuant to TMEP 1402.01, wording such as "included in this class" is not the common name of particular goods or services and would not be understood by those unfamiliar with the Nice Classification. If an identification includes wording such as "included in this class," "belonging in this class," or "excluding goods/services in other classes," or the like, the examining attorney will require the applicant to delete such wording because it does not identify a particular good or service. Consequently, the wording “in this class” is deleted.
Applicant included the wording “leasing access time to a computer database”. Pursuant to the Identification Manual, this language is not to be used as it is confusing content and access providers. Therefore, the wording “leasing access time to a computer database” has been deleted.
The wording “computer software”, “computer programs”, and “software applications” in the identification of goods and/or services is indefinite and overly broad. Such wording is indefinite because it does not make clear the exact nature of the goods and/or services. For example, under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods in International Class 9. The wording “software” is overly broad because it is unclear whether the applicant is offering goods in the nature of downloadable software in International Class 9, or whether the applicant is offering services in the nature of website hosting in International Class 42.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or
services which should be removed, it will be shown with a line through it such as this: strikethrough. When making
its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 9: Computers; ___ {indicate type of software, e.g., downloadable, recorded}
computer software for ___ {specify the function of the software, e.g., use as a spreadsheet, word processing}; ___
{indicate type of software, e.g., downloadable, recorded} computer programs for ___ {specify the function of
the software, e.g., use as a spreadsheet, word processing}; computer hardware; ___ {indicate type of routers, e.g., network, wireless} routers;
computer peripherals; computer-based communications and terminal equipment, namely, ___ {indicate particular goods, e.g., communications computers};
apparatus and instruments for recording, transmitting, reproducing or and processing sound, images and or data in the
nature of apparatus for recording, transmitting and reproducing sound and images; recorded media in the nature of digital media, namely, recorded media in the nature of
pre-recorded CDs, video tapes, laser disks and DVDs featuring ___ {indicate subject matter, e.g., finance}; recorded and downloadable educational media, namely, ___ {indicate form of goods, e.g., audio files, video recordings, multimedia files} featuring ___
{indicate subject matter or field, e.g., finance}; ___ {indicate type of software, e.g., downloadable, recorded} computer
software for ___ {specify the function of the software, e.g., use as a spreadsheet, word processing}, blank digital recording in the
nature of blank digital record disks or, blank analogue recording in the nature of blank analogue record disks, and storage media calculators;
calculating machines; data processing equipment; magnetic tapes, namely, ___ {indicate particular goods, e.g., blank magnetic computer tapes}; blank magnetic discs; magnetic data carriers, namely, ___ {indicate particular goods, e.g., blank magnetic data carriers, pre-recorded magnetic data
carriers featuring finance}; information storage devices, namely, ___ {indicate particular goods, e.g., USB (universal serial bus) hardware for information
storage, external computer hard drive being computer information storage device}; blank CD-ROMs for sound or video recording; downloadable
electronic publications in the nature of ___ {indicate specific nature of publication, e.g., magazines} in the field of ___ {indicate subject matter of publication, e.g., finance}; downloadable mobile software applications for ___ {indicate
function of software, e.g., managing bank accounts, editing photos}; integrated software packages for human resource management, payroll, financial asset management,
financial reporting, workforce management, talent management; electronic interfaces, namely, __ {indicate particular goods, e.g., electronic display
interfaces}; ___ {indicate type of software, e.g., downloadable, recorded} computer
software for use as electronic mail boxes; computer software packages comprised of downloadable application software for managing finances; ___ {indicate type of software, e.g., downloadable, recorded} computer software for use as computer databases; software creation, namely, ___ {indicate type of software, e.g., downloadable, recorded} computer software for use to create software
Class 35: Advertising; business management; business administration; providing office functions; business management and administration services in
respect of financial services; business ___ {indicate type of business services, e.g., marketing, development, consultation} services relating to finance,
valuation, loans, mortgages, insurance, capital management, brokerage, banking, capital investments and real estate affairs; accounting; forensic accounting; management accounting; providing business information on benchmarking as (evaluation of business organisation practices); business data analysis
services; business appraisals; business development services; business feasibility studies; business merger services in the nature of business merger consultation; business
modelling services; business negotiations of business contracts for others; business planning; business recruitment consultancy; business research; business statistical
data analysis; business efficiency or process auditing for (examining, reviewing or assessing the working of a business or
organization); preparation of business reports; preparation of documents relating to business, namely, ___ {indicate particular
services, e.g., preparation of business reports relating to business}; processing of business survey results; providing information, including online, about advertising and office
functions, namely, providing a searchable online advertising informational guide featuring the goods and services of other vendors via the internet in the field of __ {indicate field or type of goods or services, e.g., financial software}; strategic business planning; tax advisory services as
(business management and accountancy services); book-keeping; marketing consultancy; planning of marketing strategies; business strategy services, namely, ___ {indicate particular services, e.g., business strategy development services}; auditing of accounts; preparation of accounts, namely, accounts receivable billing
services; consultancy relating to public relations; business administration services; administration and management services in this class; advisory services relating to customer
service, namely, ___ {indicate particular services, e.g., advisory services with regard to customer analysis}; dissemination of computer software, namely, ___ {indicate services, e.g., distribution of recorded computer shareware software samples for publicity purposes, distribution of recorded computer shareware
software for advertising purposes}; advisory services relating to business risk management; electronic data processing in the field of ___ {specify field
or industry, e.g., payroll} not including payment or claims processing; database management; compilation of information into computer databases; compilation of business data; commercial
information services provided by access via the internet to a computer database; ___ {indicate type of information services, e.g., employee
relations} information services, business advisory services and ___ {indicate type of consultancy services, e.g., professional business, business organization} consultancy services in relation to all of the aforementioned
Class 36: Insurance, namely, ___ {indicate type of insurance services, e.g., insurance brokerage, insurance information};
financial affairs, namely, financial management services; monetary affairs, namely, providing financial analysis services; financial services, namely, ___ {indicate particular services, e.g., debt settlement, conducting an online exchange of interest rate products via the internet and intranet systems};
provision of financial information, in particular including, provision of financial information in respect to securities, financial markets, share prices, financial
trading, financial indices, commodities, and in particular including, provision of on-line financial information on-line and provision of
financial information through computer networks; financial analysis; financial consultancy; financial management; electronic financial trading services; financial
reporting, namely, ___ {indicate particular services, e.g., financial credit reporting services}; financial risk management; administrative services
relating to investments, namely, investment administration as annuity services; financial modelling services; financial portfolio management; ___ {indicate type of information services, e.g., foreign exchange, share price} information services, ___ {indicate type of
advisory services, e.g., real estate investment trust, venture capital} advisory services and ___ {indicate type of consultancy
services, e.g., investment, insurance} consultancy services in relation to all of the aforementioned; electronic data processing of insurance claims and payment
data
Class 37: technical support services, namely, technical advice related to the installation of ___ {indicate goods being installed, e.g., computer hardware}; technical support services, namely, troubleshooting in the nature of the repair of computer hardware
Class 38: Telecommunications, namely, ___ {indicate particular services, e.g., ISDN services, providing advanced calling
features}; providing user access to global computer networks and global communications networks, in particular, including providing
user access to global computer networks and global communications networks for the transfer and dissemination of financial information; providing on-line access to
publications, namely, providing a website featuring technology that enables users to access publications online; leasing access time to a computer database; providing
user access to global communications computer networks which allow real-time interaction between users; providing technical infrastructure and network
to allow on-line transactions; provision of access to electronic messaging systems; electronic transmission of messages; electronic message services; providing access to databases; internet
portal services for (providing user access to a global computer network); information transmission services via digital networks, advisory
services relating to telecommunications and telecommunications consultancy services in relation to all of the aforementioned
Class 41: Education, namely, conducting classes, seminars, conferences, and workshops in the field of finance; providing of training in the field of ___ {indicate field or subject matter, e.g., information technology, business management, financial analysis}; computer training, namely, ___ {indicate particular services, e.g., computer education training, computer training in the use of computers}; arranging and conducting of seminars and professional training workshops in the field of ___ {indicate specific field, e.g., business development}; consultancy services relating to ___ {specify, e.g., business} training; instruction services in the field of ___ {indicate specific field, e.g., finance}; book publishing of training materials; information services in the nature of ___ {indicate particular services, e.g., providing information relating to education services}, advisory services in the nature of ___ {indicate particular services, e.g., providing advice in the field of educational and entertainment activities and events for children} and ___ {indicate type of consultancy services, e.g., business training} consultancy services in relation to all of the aforementioned
Class 42: Scientific and technological services, namely, ___ {specify type of services, e.g., scientific research, analysis,
testing} in the field of ___ {indicate field or subject matter, e.g., physics}, and ___ {indicate type of research, e.g., physics,
bacteriology} research and ___ {indicate type of design, e.g., computer networking hardware, computer datacenter architecture} design relating
thereto; design and development of computer hardware and software; computer technology support services, namely, help desk services; technical support
services, namely, ___ {indicate particular services, e.g., troubleshooting of computer software problems, migration of datacenter, server and database
applications}; design, development, maintenance and updating of computer software, firmware and hardware in the nature of ___ {indicate particular
services, e.g., design and development of computer software for database management}; rental of computer software; computer rental; computer software programming of
software for ___ {indicate subject matter, e.g., finance}; design of computer databases; hosting of databases; software as a service (SaaS) services featuring software for ___ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet}; platform as a service
(PaaS) featuring computer software platforms for ___ {specify the function of the programs, e.g., for use in database management, for use as a
spreadsheet}; computer programming; providing temporary useprovision of online non-downloadable software for ___ {specify the
function of the program, e.g., for use in database management, for use as a spreadsheet}; providing temporary use of online non-downloadable software for use in software
creation; information technology (IT) services for (computer hardware, software and peripherals design and technical consultancy), namely,
on-site information technology management of computer information technology systems of others as information technology computer services; ___ {indicate type
of information services, e.g., weather} information services, advisory services relating to computer software and consultancy services being ___ {indicate particular services, e.g., consulting services in the field of cloud computing} in relation to all of the aforementioned;
computer software, namely, providing temporary use of on-line non-downloadable software for ___ {specify the function of the programs, e.g., for use in database management, for use
as a spreadsheet}; computer programs, namely, providing temporary use of on-line non-downloadable computer program software for ___ {specify the function of the programs, e.g.,
for use in database management, for use as a spreadsheet}; software applications, namely, providing temporary use of a non-downloadable web software application for ___
{indicate the function of web-based software application, e.g., time management, sharing web-based documents}; computer software packages, namely, updating of computer software packages;
electronic video data processing, namely, interpreting electronic video content and identifying segments that contain predefined key events; providing technical infrastructure and network to
allow on-line transactions, namely, hosting a technical server on a global computer network for the purpose of facilitating e-commerce on-line transactions via such a server
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.
Advisory – Multiple Class Application
(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 goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 6 class(es). 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ADVISORY - §1(B) & §44(D) INTENT TO PERFECT §44(E)
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
CONCLUSION
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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
/Xu, Elaine/
Trademark Examining Attorney
Law Office 128
(571) 270-5297
elaine.xu@uspto.gov
RESPONSE GUIDANCE