To: | Podium Corporation, Inc. (trademarks@wsgr.com) |
Subject: | U.S. Trademark Application Serial No. 88617888 - PODIUM - 55913-TM1017 |
Sent: | June 24, 2020 03:50:53 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88617888
Mark: PODIUM
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Correspondence Address: WILSON SONSINI GOODRICH & ROSATI
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Applicant: Podium Corporation, Inc.
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Reference/Docket No. 55913-TM1017
Correspondence Email Address: |
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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The likelihood of confusion refusals under Trademark Act Section 2(d) are withdrawn.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.
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).
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