To: | A.W. Chesterton Company (anthony.laurentano@nelsonmullins.com) |
Subject: | U.S. Trademark Application Serial No. 88649857 - PREDDIO - CTH-684 |
Sent: | September 01, 2020 09:53:19 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88649857
Mark: PREDDIO
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Correspondence Address: |
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Applicant: A.W. Chesterton Company
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Reference/Docket No. CTH-684
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: September 01, 2020
This Office Action is written in response to the applicant’s letter filed on July 15, 2020. The examining attorney has reviewed the response and determined the following:
Applicant’s companion Application Serial No. 88649843 was queried prior to publication for an insufficient recitation of services. Guidance from that query was used in preparation of this Office Action.
INFORMALITY
The applicant must respond to the following informality:
Recitation and Classification of Services
The wording “collection and analysis of data associated with mechanical devices in commercial or industrial installations” in the recitation of services is unacceptable as indefinite and is properly classified in more than one International Class. Applicant may adopt the following recitation, if accurate:
Collection and analysis of business data associated with mechanical devices in commercial or industrial installations (International Class 35);
Collection and analysis of financial data associated with mechanical devices in commercial or industrial installations (International Class 36);
Software as a service (SaaS) services featuring software for collecting and analyzing data from sensors attached to mechanical devices in the field of [applicant must further specify the field of commercial or industrial installations]; data mining; providing non-downloadable mobile application based, cloud based, or web based software for data collection and analysis services using proprietary software for collecting, analyzing, and evaluating data associated with sensors attached to mechanical devices in the field of [applicant must further specify the field of commercial or industrial installations] (International Class 42). TMEP §1402.01.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
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.
Partial Abandonment Advisory
If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application: Collection and analysis of data associated with mechanical devices in commercial or industrial installations (Class 35); Software as a service (SaaS) services featuring software for collecting and analyzing data from sensors attached to mechanical devices in the field of commercial or industrial installations; providing non-downloadable mobile application based, cloud based, or web based software for data collection and analysis services using proprietary software for collecting, analyzing, and evaluating data associated with sensors attached to mechanical devices in the field of commercial or industrial installations (Class 42). The application will then proceed forward for the following goods and/or services only: Business data analysis services for commercial or industrial installations for gathering and analyzing data associated with mechanical devices and predicting replacement or service of the mechanical devices (Class 35); Data mining (Class 42). 37 C.F.R. §2.65(a).
Applicant’s Response
Guidelines for responding are set forth below.
How to respond. Click to file a response to this nonfinal Office action.
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William Breckenfeld
Examining Attorney
Law Office 116
571-272-9133
Email: william.breckenfeld@uspto.gov
informal queries
RESPONSE GUIDANCE