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 20, 2019

 

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

 

Search of Office’s Database of Marks

 

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:

   

• Amend Identification of Goods and Services
• Domicile Address Required

 

Telephone / Email Response Suggested

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action. Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.

 

Identification of Goods and Services

 

The identification of goods and services currently reads:

 

Class 9: computer software and downloadable software that enables executives, sales, and marketing professionals to see, view, gather, track, manipulate, organize, analyze, measure and attribute holistic cross channel data and utilize marketing data and trends

 

Class 35: business marketing consulting; marketing intelligence services, namely, analyzing and compiling business data for market research purposes; business strategic planning services; business marketing services, namely, strategic marketing services

 

Class 42: technological consulting in the field of selecting computer technology in the fields of business marketing, planning and market research; providing temporary use of nondownloadable computer software that enables executives, sales, and marketing professionals to view, gather, track, manipulate, organize, analyze and utilize marketing data and trends; software as a service (SAAS) services featuring software that enables executives, sales, and marketing professionals to view, gather, track, manipulate, organize, analyze and utilize marketing data and trends

 

The wording “computer software” in class 9 is indefinite and too broad and must be deleted or clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in class 9, whereas providing their temporary, online non-downloadable use is a service in class 42. See TMEP §1402.03(d).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Applicant may adopt the following identification, if accurate (suggested deletion in strikethrough):

 

Class 9: computer software and downloadable software that enables executives, sales, and marketing professionals to see, view, gather, track, manipulate, organize, analyze, measure and attribute holistic cross channel data and utilize marketing data and trends

 

Class 35: business marketing consulting; marketing intelligence services, namely, analyzing and compiling business data for market research purposes; business strategic planning services; business marketing services, namely, strategic marketing services

 

Class 42: technological consulting in the field of selecting computer technology in the fields of business marketing, planning and market research; providing temporary use of nondownloadable computer software that enables executives, sales, and marketing professionals to view, gather, track, manipulate, organize, analyze and utilize marketing data and trends; software as a service (SAAS) services featuring software that enables executives, sales, and marketing professionals to view, gather, track, manipulate, organize, analyze and utilize marketing data and trends

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See 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.

 

Domicile Address Required

 

All applications must include the applicant’s domicile address because domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO. See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e. headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).

 

The application record lists applicant’s address as being “c/o” or in “care of” another party’s address. In most cases, a “care of” address is not acceptable as a domicile address because it does not identify the physical location of applicant’s headquarters. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.

 

To provide applicant’s domicile address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.

 

If applicant amends the application to list a domicile street address located outside of the United States or its territories, applicant is foreign-domiciled and must appoint a U.S. licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. See Hiring a U.S.-licensed trademark attorney for more information. If applicant’s domicile street address is located within the United States or its territories, applicant is not required to appoint a U.S.-licensed attorney.

 

Advisory – Responding to a Non-Final Office Action

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

Click to file a response to this nonfinal Office action 

 

 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.  

 

 

 

 

/Sara Anne Helmers/

Sara Helmers (she/her)

Trademark Examining Attorney

Law Office 126

571-270-3639

Sara.Helmers@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 20, 2019 for

U.S. Trademark Application Serial No. 88618411

 

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. 

 

 

/Sara Anne Helmers/

Sara Helmers (she/her)

Trademark Examining Attorney

Law Office 126

571-270-3639

Sara.Helmers@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 20, 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.”