Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  April 10, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 3/20/2020.

 

In a previous Office action dated 12/2/2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods and/or services.

 

The following refusal has been obviated:  Section 2(d) refusals and potential refusals obviated by deletion of Class 35.  See TMEP §§713.02, 714.04. 

 

The trademark examining attorney maintains and now makes FINAL the recitation of services requirement.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

IDENTIFICATION OF GOODS REQUIREMENT MADE FINAL

 

The requirement to amend the recitation of services is now made FINAL.  See 37 C.F.R. §2.63(b).  In the previous office action, the examining attorney required the applicant to amend the recitation of services because as written, it was indefinite.  See TMEP §1402.01. 

 

The applicant has amended the identification as follows:

 

Educational services, namely, providing on-line instruction and peer learning in the field of software development; Educational services, namely, providing on-line instruction and peer learning for professional service providers (e.g. teachers, designers, and engineers) for certification in the field of software development (Class 41), and

 

Computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking services in the field of software development; Computer services, namely, creating an on-line community for registered users to to engage in social, business and community networking; Providing a website that gives computer users the ability to exchange information about professional service providers and about the software development industry; Providing temporary use of a web-based software application for providing an online marketplace for consumers of professional software development services and professional service providers on a global computer network; Providing temporary use of a web-based software application for providing remote job listings (Class 42).

 

The underlined portions of the identification as amended remain unacceptable.  In Class 41, the parentheses are not permitted.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  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.

 

In Class 42, applicant has added the wording “Providing temporary use of a web-based software application for providing remote job listings” to the recitation.  That wording is beyond the scope of the original wording in Class 42, and is therefore not permitted.  As cautioned previously, applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  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.

 

Applicant may adopt the following wording:

 

Educational services, namely, providing on-line instruction and peer learning in the field of software development; Educational services, namely, providing on-line instruction and peer learning for professional service providers, FOR EXAMPLE, teachers, designers, and engineers, for certification in the field of software development (Class 41), and

 

Computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking services in the field of software development; Computer services, namely, creating an on-line community for registered users to to [ß NOTE DUPLICATE WORD] engage in social, business and community networking; Providing a website that gives computer users the ability to exchange information about professional service providers and about the software development industry; Providing temporary use of a web-based software application for providing an online marketplace for consumers of professional software development services and professional service providers on a global computer network; Providing temporary use of a web-based software application for providing remote job listings (Class 42).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

 

/James T. Griffin/

Examining Attorney, Law Office 103

United States Patent & Trademark Office

571-272-9169

jim.griffin@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 April 10, 2020 for

U.S. Trademark Application Serial No. 88592055

 

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. 

 

 

/James T. Griffin/

Examining Attorney, Law Office 103

United States Patent & Trademark Office

571-272-9169

jim.griffin@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 April 10, 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.”