To: | Podium Corporation, Inc. (trademarks@wsgr.com) |
Subject: | U.S. Trademark Application Serial No. 88617888 - PODIUM - 55913-TM1017 |
Sent: | June 04, 2021 11:48:38 AM |
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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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: June 04, 2021
The statement of use 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.
Class 35: Activities Not a Registrable Service
The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:
(1) A service is a real activity, not an idea, concept, process, or system.
(2) A service is performed primarily for the benefit of someone other than the applicant.
(3) A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.
TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).
In this case, the description set forth in the identification of services is as follows: “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.”
The specimen indicates that these activities are not registrable services because the mark is used only in the context of a software platform called PODIUM that is for used by consumers for various business functions. Thus, applicant is not performing a real activity, but rather, selling a software platform service that consumers use to perform many of business functions listed in the class 035 services. The class 035 specimens are merely additional advertising for the class 042 software services in the application. This is further supported by the facts that the services are touted as “automated” includes screenshots of various functions of the software running, and repeatedly offer “Watch Demo” links of the software in operation. Thus, applicant is not performing an actual service in Class 035, regardless of the business field uses of the software platform or service offered by applicant.
Response option. Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows proper service mark use for the services in the statement of use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §1301.04(a).
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Partial Abandonment and Response Guidelines
If applicant does not respond to this Office action within the six-month period for response, International Class 035 will be deleted from the application. The application will then proceed with International Classes 041 and 042 only. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
How to respond. Click to file a response to this nonfinal Office action.
Anthony Rinker
/Anthony M. Rinker/
Examining Attorney
Law Office 102
U.S. Trademark Office
(P) 571-272-5491
anthony.rinker@uspto.gov
RESPONSE GUIDANCE