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:  December 19, 2019

 

 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search of the Office Records

 

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:

 

• Partial Likelihood of Confusion Refusal
• Identification of Services – Broad/Indefinite
•  

Search of the Office Records

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is partially refused in class 042 for the services in bold below because of a likelihood of confusion with the mark in U.S. Registration Nos. 3561138, 5383320, 5383319 and 4852095.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

 

Applicant’s mark and the Registered Marks are Identical or Highly Similar

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

 

Applicant's mark is “PODIUM”. The registered marks are “PODIUM”, U.S. Registration No. 3561138, “PODYUM” and design, U.S. Registration No. 5383320, “PODYUM”, U.S. Registration No. 5383319, PODIUM: BIG DATA MANAGEMENT, with BIG DATA MANAGEMENT disclaimed, U.S. Registration No. 4852095, respectively.  Applicant’s mark is similar in appearance and sound to the registered marks in that they all share the common term(s) PODIUM or the phonetically equivalent terms PODIUM and PODYUM.

The PODIUM and PODYUM marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

 

Although applicant’s mark does not contain the entirety of the registered PODIUM: BIG DATA MANAGEMENT mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). In this case, BIG DATA MANAGEMENT is disclaimed in the registered mark, rendering PODIUM the distinctive matter in the mark, which is identical to applicant’s entire mark.

 

Finally, the stylized lettering and 3 bar design of U.S. Registration No. 5383320 is insufficient to overcome the similarity of the marks caused by use of the phonetically equivalent term PODIUM to PODYUM. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

 

Accordingly, the marks are confusingly similar.

 

The Services Are Related

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant’s services are identified as “Software as a Service (SaaS) services featuring software for use by others for automated conversion of business communications between different communications platforms and for automated integration and transmission of business communications among employees, teams, customers, vendors and other internal and external service providers for managing projects and automating workflow for business purposes; Software as a Service (SaaS) services featuring software for two-way messaging, lead generation, receiving customer feedback, customer requests and reviews, assigning received messages to employees for response, keeping a record of conversations, creating custom survey questions, sending automated responses, analyzing customer reviews, identifying high and low employee performers, incentivizing employees to collect feedback, comparing clients to competitors online, viewing historical customer review data, billing and collecting payments, and messaging internal and external team members; Software as a Service (SaaS) services featuring software for communicating online and offline, with potential customers through online reviews, monitoring company website(s), monitoring online listing sites, hosting live chats, aggregating, searching, converting and displaying customized social media content, and messaging, namely, text, instant, electronic, digital, voice and video; Software as a Service (SaaS) services featuring software for delivering messages to customers, online and offline, such as appointment scheduling, appointment reminders, appointment confirmations, feedback requests, review requests, general marketing, sales and lead generation messaging, billing and payment collection messaging, and other types of operational messaging; Software as a Service (SaaS) services featuring software for data analytics of business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; Software as a Service (SAAS) services, namely, hosting software for use by others for use in database management, and for compiling business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data in said database; Software as a Service (SaaS) services featuring software for retrieving, tracking, analyzing, testing, and measuring business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; Software as a Service (SAAS) services, namely, hosting software for use by others for use in planning, personalizing, optimizing, monitoring, analyzing and measuring business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; providing technical data analytics services, namely, data collection, conversion, aggregation and workflow automation using proprietary software to collect, analyze and evaluate business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data customer reviews and feedback and service data, and vendor interaction data; providing temporary use of non-downloadable computer software accessed via the internet in the field of business operations analytics; Software as a Service (SaaS) services featuring software for internal and external business communications, namely, postings, memoranda, instant messaging, file sharing, calendar synchronization, administration of customer feedback, reviews and requests, billing and payment collection messaging, and automated integrations with external service providers; Software as a Service (SaaS) services featuring software for messages among employees, teams, potential customers, customers and vendors and other internal and external service providers, online and offline, such as appointment reminders, appointment confirmations, feedback requests, review requests, general marketing, sales and lead generation messaging, billing and payment collection messaging, and other types of operational messaging; Software as a Service (SaaS) services featuring software for electronic communication among employees, teams, potential customers, customers, vendors and other internal and external service providers, consultants, industry peers, and organized groups.”

 

The services for Registration No. 3561138 are identified as “Computer services, namely, monitoring and reporting on the performance, availability, and errors of websites of others; providing temporary use of non-downloadable computer software for tracking freight, cargo handling and transportation, processing shipments, arranging warehousing services, preparing shipping documentation over computer networks, intranets and the internet; hosting of internet sites for third parties; conversion of data or documents from physical to electronic media; computer software design; data conversion of computer programs and data; providing non-downloadable interactive computer software in the field of cargo, freight and cargo container transportation and storage, and warehousing over computer networks, intranets and the internet.”

 

The services for Registration No. 5383320 are identified as “Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, get feedback from their peers, coaches and trainers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, modifying, sharing or otherwise providing electronic media, statistics or information over communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple online sites; Providing online sites featuring technology that enables online users to create personal profiles featuring social, athletic, sports and business networking information and to transfer and share such information among multiple online sites; Providing information from searchable indexes and databases of information, including text, electronic documents, database, graphics, photographic images and audio visual information, by means of computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Computer services in the nature of providing customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, texts, graphics and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks. Providing online sites that give users the ability to upload, modify and share audio, video, photographic images, text, graphics and data, all of the foregoing services excluding car racing and other motorsports.”

 

The services for Registration No. 5383319 are identified as “Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, get feedback from their peers, coaches and trainers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, modifying, sharing or otherwise providing electronic media, statistics or information over communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple online sites; Providing online sites featuring technology that enables online users to create personal profiles featuring social, athletic, sports and business networking information and to transfer and share such information among multiple online sites; Providing information from searchable indexes and databases of information, including text, electronic documents, database, graphics, photographic images and audio visual information, by means of computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Computer services in the nature of providing customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, texts, graphics and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks. Providing online sites that give users the ability to upload, modify and share audio, video, photographic images, text, graphics and data, all of the foregoing services excluding car racing and other motorsports.”

 

The services for Registration No. 5383320 are identified as “Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, get feedback from their peers, coaches and trainers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, modifying, sharing or otherwise providing electronic media, statistics or information over communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple online sites; Providing online sites featuring technology that enables online users to create personal profiles featuring social, athletic, sports and business networking information and to transfer and share such information among multiple online sites; Providing information from searchable indexes and databases of information, including text, electronic documents, database, graphics, photographic images and audio visual information, by means of computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Computer services in the nature of providing customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, texts, graphics and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks. Providing online sites that give users the ability to upload, modify and share audio, video, photographic images, text, graphics and data, all of the foregoing services excluding car racing and other motorsports.”

 

 

The services for Registration No. 4852095 are identified as “Software as a service (saas) services featuring software for big data analytics and database management, provided on a subscription basis which is licensed and can be accessed by users using a thin client via a web browser; Software as a service (saas) services featuring software for extracting, cleansing, standardizing, and distributing data, provided on a subscription basis which is licensed and can be accessed by users using a thin client via a web browser; Software as a service (saas) services featuring software for loading, viewing, searching and browsing data from multiple sources, provided on a subscription basis which is licensed and can be accessed by users using a thin client via a web browser Software as a service (saas) services featuring software for creating searchable databases of information and data, provided on a subscription basis which is licensed and can be accessed by users using a thin client via a web browser.”

 

The applicant's various messaging, live chat, communications, data management and analytics  software services in bold above are closely related to the registrant's data conversion, interactive discussion, data and information sharing software and data analytics and data database services, which could all be used in the business field for related purposes. Furthermore, the marks are identical, phonetically identical, or highly similar, as discussed above. Where the marks of the respective parties are identical or virtually identical, as in this the PODIUM marks in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

Accordingly, registration is refused under Trademark Act Section 2 (d) based on a likelihood of confusion.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must address the following requirements

 

Identification of Services – Broad/Indefinite

The identification of services needs clarification because it is too broad or indefinite and could include services classified in other international classes.  See TMEP §§1402.01, 1402.03.

 

International Class 035: Collection of market research information, namely, monitoring of third party websites to capture content regarding business operations, employee and team interactions and performance, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback requests, and vendor interactions for others; compilation and systemization of data into computer databases; business assistance services, namely, design of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback requests, vendor interactions for others; collection of market research information, namely, administration and tracking of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions for others; monitoring of third party sites to capture content regarding customer reviews and feedback; compilation and systemization of data into computer databases; design of customer feedback requests; administration and tracking of customer reviews and feedback

 

Applicant must clarify the business purpose of the above language because it could include quality control services in class 042.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 035 for “compilation and systemization of data into computer databases;.”  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.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

 

 Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 035: Collection of market research information, namely, monitoring of third party websites to capture content regarding business operations, employee and team interactions and performance, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback requests, and vendor interactions for others; compilation and systemization of data into computer databases; business assistance services, namely, design of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, design of business plans for customer and potential customer interactions, customer reviews and feedback requests, and vendor interactions for others; collection of market research information, namely, administration and tracking of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions for others; monitoring of third party sites to capture content regarding customer reviews and feedback for business purposes; design of customer feedback requests for business purposes; administration and tracking of customer reviews and feedback for business purposes

 

International Class 041: Providing on-line non-downloadable articles in the fields of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions; providing seminars in the fields of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions; providing recognition services by way of awards, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the fields of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions

 

International Class 042: Software as a Service (SaaS) services featuring software for use by others for automated conversion of business communications between different communications platforms and for automated integration and transmission of business communications among employees, teams, customers, vendors and other internal and external service providers for managing projects and automating workflow for business purposes; Software as a Service (SaaS) services featuring software for two-way messaging, lead generation, receiving customer feedback, customer requests and reviews, assigning received messages to employees for response, keeping a record of conversations, creating custom survey questions, sending automated responses, analyzing customer reviews, identifying high and low employee performers, incentivizing employees to collect feedback, comparing clients to competitors online, viewing historical customer review data, billing and collecting payments, and messaging internal and external team members; Software as a Service (SaaS) services featuring software for communicating online and offline, with potential customers through online reviews, monitoring company website(s), monitoring online listing sites, hosting live chats, aggregating, searching, converting and displaying customized social media content, and messaging, namely, text, instant, electronic, digital, voice and video; Software as a Service (SaaS) services featuring software for delivering messages to customers, online and offline, such as appointment scheduling, appointment reminders, appointment confirmations, feedback requests, review requests, general marketing, sales and lead generation messaging, billing and payment collection messaging, and other types of operational messaging; Software as a Service (SaaS) services featuring software for data analytics of business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; Software as a Service (SAAS) services, namely, hosting software for use by others for use in database management, and for compiling business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data in said database; Software as a Service (SaaS) services featuring software for retrieving, tracking, analyzing, testing, and measuring business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; Software as a Service (SAAS) services, namely, hosting software for use by others for use in planning, personalizing, optimizing, monitoring, analyzing and measuring business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; providing technical data analytics services, namely, data collection, conversion, aggregation and workflow automation using proprietary software to collect, analyze and evaluate business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data customer reviews and feedback and service data, and vendor interaction data; providing temporary use of non-downloadable computer software accessed via the internet in the field of business operations analytics; Software as a Service (SaaS) services featuring software for internal and external business communications, namely, postings, memoranda, instant messaging, file sharing, calendar synchronization, administration of customer feedback, reviews and requests, billing and payment collection messaging, and automated integrations with external service providers; Software as a Service (SaaS) services featuring software for messages among employees, teams, potential customers, customers and vendors and other internal and external service providers, online and offline, such as appointment reminders, appointment confirmations, feedback requests, review requests, general marketing, sales and lead generation messaging, billing and payment collection messaging, and other types of operational messaging; Software as a Service (SaaS) services featuring software for electronic communication among employees, teams, potential customers, customers, vendors and other internal and external service providers, consultants, industry peers, and organized groups; monitoring of third party sites to capture content regarding customer reviews and feedback for quality control purposes for others; design of customer feedback requests for quality control purposes for others; administration and tracking of customer reviews and feedback for quality control purposes for others

 

 

 See TMEP §1402.01.

 

 If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 035, 041 and 042.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  

 

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.  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 goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or 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 goods and/or services will further limit scope, and once goods and/or 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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04. 

 

 

 

Partial Abandonment and Applicant’s Response

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, the following goods/services will be deleted from the application: 

 

International Class 035: customer and potential customer interactions, customer reviews and feedback requests, vendor interactions for others; monitoring of third party sites to capture content regarding customer reviews and feedback; compilation and systemization of data into computer databases; design of customer feedback requests; administration and tracking of customer reviews and feedback

 

International Class 042: two-way messaging, and messaging internal and external team members” communicating online and offline, with potential customers through online reviews, hosting live chats, and messaging, namely, text, instant, electronic, digital, voice and video; Software as a Service (SaaS) services featuring software for delivering messages to customers, online and offline, such as appointment scheduling, appointment reminders, appointment confirmations, feedback requests, review requests, general marketing, sales and lead generation messaging, billing and payment collection messaging, and other types of operational messaging; Software as a Service (SaaS) services featuring software for data analytics of business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; Software as a Service (SAAS) services, namely, hosting software for use by others for use in database management, and for compiling business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data in said database; Software as a Service (SaaS) services featuring software for retrieving, tracking, analyzing, testing, and measuring business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; Software as a Service (SAAS) services, namely, hosting software for use by others for use in planning, personalizing, optimizing, monitoring, analyzing and measuring business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data, customer reviews and feedback, and vendor interaction data; providing technical data analytics services, namely, data collection, conversion, aggregation and workflow automation using proprietary software to collect, analyze and evaluate business operations data, employee and team interaction data, employee and team performance data, lead generation data, customer and potential customer interaction data customer reviews and feedback and service data, and vendor interaction data;

 

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

The application will then proceed with the following goods/services only: 

 

International Class 035: Collection of market research information, namely, monitoring of third party websites to capture content regarding business operations, employee and team interactions and performance, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback requests, and vendor interactions for others; compilation and systemization of data into computer databases; business assistance services, namely, design of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics for others; collection of market research information, namely, administration and tracking of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions for others;

 

International Class 041: Providing on-line non-downloadable articles in the fields of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions; providing seminars in the fields of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions; providing recognition services by way of awards, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the fields of business operation metrics, employee and team interaction metrics, employee and team performance metrics, lead generation and lead generation metrics, customer and potential customer interactions, customer reviews and feedback, and vendor interactions

 

International Class 042: “Software as a Service (SaaS) services featuring software for use by others for automated conversion of business communications between different communications platforms and for automated integration and transmission of business communications among employees, teams, customers, vendors and other internal and external service providers for managing projects and automating workflow for business purposes; Software as a Service (SaaS) services featuring software for lead generation, receiving customer feedback, customer requests and reviews, assigning received messages to employees for response, keeping a record of conversations, creating custom survey questions, sending automated responses, analyzing customer reviews, identifying high and low employee performers, incentivizing employees to collect feedback, comparing clients to competitors online, viewing historical customer review data, billing and collecting payments; Software as a Service (SaaS) services featuring software for monitoring company website(s), monitoring online listing sites, aggregating, searching, converting and displaying customized social media content; providing temporary use of non-downloadable computer software accessed via the internet in the field of business operations analytics”

 

See TMEP §718.02(a).

 

In such case, applicant’s only option would be to file a timely petition to revive the abandoned goods/services, which, if granted, would allow for the reinsertion of these goods/services into the application.  See 37 C.F.R. §2.66; TMEP §§718.02(a), 1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

 

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.    

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 December 19, 2019 for

U.S. Trademark Application Serial No. 88617888

 

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. 

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 December 19, 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.”