Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

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 27, 2019

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On November 26 and 27, 2019, the examining attorney and Mr. Jason Koransky discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES:

• Identification of Services in International Class 42
• Translation Statement Required

 

IDENTIFICATION OF SERVICES IN INTERNATIONAL CLASS 42

 

-          The wording “building, executing, securing and managing computer applications and application components” is indefinite and must be amended to clarify that the nature of services is computer technical services in the nature of application service provider services. Furthermore, the wording “building” is indefinite and should be replaced with “designing” or “developing”, and “executing” is indefinite and should be replaced with “hosting”.  Finally, applicant must clarify the field of the computer applications and application components.

-          The wording “securing” is indefinite and should be separated into its own entry clarifying the nature and function of the services, such as “computer security services, namely, restricting access to and by computer networks, to and of computer applications and application components, based on assigned credentials”.

-          The wording “a platform for enabling the orchestration of microservices” is indefinite and overbroad because “platform” is an ambiguous term that could belong in multiple classes. To remain in Class 42, applicant must amend the wording to clarify that it provides a computer platform. Furthermore, the wording “microservices” is indefinite as written and must be amended to clarify that the microservices are “IT microservices”.

-          The wording “deploying, managing, securing and operating containerized applications across different environments” is indefinite and should be amended to clarify that the services are computer services. The wording “containerized applications” is indefinite and should be amended to clarify that they are containerized software applications, and the wording “across different environments” should be amended to clarify that the environments are virtual.

-          The wording “securing” is again indefinite in the context of these services and should be separated into its own entry clarifying the nature and function of the services, such as “computer security services, namely, restricting access to and by computer networks, to and of containerized software applications across different virtual environments, based on assigned credentials”.

-          The wording “platform as a service …  different environments” includes the wording “securing” which must be separated out into its own definite entry with clarification on the security services, or removed entirely.

 

Applicant may adopt the following identification, if accurate (changes highlighted in bold italic):

 

International Class 42:

 

Computer technical services in the nature of application service provider services, namely, developing, hosting, and managing computer applications and application components in the field of [specify field or subject matter]; computer security services, namely, restricting access to and by computer networks, to and of computer applications and application components, based on assigned credentials; providing a computer platform for enabling the orchestration of IT microservices; computer services, namely, deploying, managing, and operating containerized software applications across different virtual environments; computer security services, namely, restricting access to and by computer networks, to and of containerized software applications across different virtual environments, based on assigned credentials; Platform as a service (PaaS) featuring computer software platforms for deploying, managing, and operating containerized software applications across different virtual environments

 

SCOPE ADVISORY

 

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. 

 

TRANSLATION STATEMENT REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark “TANZU”.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “TANZU” in the mark is “the growing branch of a tree”.  TMEP §809.03.  See attached translation evidence.

 

 

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

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.  

 

 

Alexandra Foster

/Alexandra Foster/

Trademark Examining Attorney

Law Office 117

(571) 272-5111

alexandra.foster1@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 27, 2019 for

U.S. Trademark Application Serial No. 88590630

 

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. 

 

 

Alexandra Foster

/Alexandra Foster/

Trademark Examining Attorney

Law Office 117

(571) 272-5111

alexandra.foster1@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 27, 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.”