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:  June 24, 2020

 

 

 

This Office action is in response to applicant’s communication filed on 06/19/2020.

The likelihood of confusion refusals under Trademark Act Section 2(d) are withdrawn.

For the reasons set forth below, the following requirements are now made FINAL:  Broad/Indefinite Services. See 37 C.F.R. §2.63(b).

 

FINAL: Identification of Services – Broad/Indefinite

The amended 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 042: Software as a Service (SaaS) services featuring software for lead generation, receiving customer feedback, customer requests and reviews, creating custom survey questions, 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 online listing sites; 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, 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; monitoring of third party sites to capture content regarding customer reviews and feedback for customer relationship management for others; design of customer feedback requests for customer relationship management for others; administration and tracking of customer reviews and feedback for others

 

The services are broad and indefinite because a class 042 purpose is not specified, but business services are specified. Further, the field of use of business operation analytics does not explain the function or use of the software.

 

 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 lead generation, receiving customer feedback, customer requests and reviews, creating custom survey questions, 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 online listing sites; 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 temporary use of non-downloadable computer software for analyzing business operations data accessed via the internet in the field of business operations analytics

 

 See TMEP §1402.01.

 

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. 

 

 

 

Applicant’s Response and Partial Abandonment

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: 

 

Class 042: providing technical data analytics services, namely, data collection, 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; monitoring of third party sites to capture content regarding customer reviews and feedback for customer relationship management for others; design of customer feedback requests for customer relationship management for others; administration and tracking of customer reviews and feedback for others

 

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following:

 

 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

 

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

 

Class 042:  International Class 042: Software as a Service (SaaS) services featuring software for lead generation, receiving customer feedback, customer requests and reviews, creating custom survey questions, 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 online listing sites; 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

 

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

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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).

 

 

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 June 24, 2020 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 June 24, 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.”