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 16, 2019

 

SUMMARY OF ISSUES:

• Identification of goods/services
• Foreign registration

 

The referenced application 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.

 

SEARCH RESULT

 

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).

 

IDENTIFICATION OF GOODS/SERVICES

 

Some of the identification of goods/services are indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods/services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

The identification for software in International Class 9 is indefinite and too broad and must be 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 International Class 9, whereas providing their temporary, online non-downloadable use is a service in International 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).

 

In class 16, the applicant must specify the subject matter of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).  For example, “magazines in the field of medicine,” “newsletters about television programs,” and “books and pamphlets in the field of financial classification of companies and securities,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

Because of the number of goods/services requiring amendment, please see the full listing of the goods/services requiring amendment and the suggested amendments below. 

 

For easier reference, the goods/services requiring amendment and the suggested amendments are shown in bold and italics.

 

Applicant may adopt the following wording, if accurate: 

 

(SPECIFY recorded or downloadable) software for programming computers; recorded computer programs for (SPECIFY function/use of software); (SPECIFY recorded or downloadable) business intelligence software for (SPECIFY function/use of software, e.g., tracking accounts receivables, etc.); (SPECIFY recorded or downloadable) graphical user interface software; (SPECIFY recorded or downloadable) computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; (SPECIFY recorded or downloadable) computer e-commerce software to allow users to perform electronic business transactions via a global computer network; (SPECIFY recorded or downloadable) computer software for use in automating and managing business processes; (SPECIFY recorded or downloadable) computer software for accessing, browsing, and searching online databases; (SPECIFY recorded or downloadable) computer software for visualization in the nature of graphical representation of (SPECIFY what is graphically represented, e.g., business sales data, etc.); (SPECIFY recorded or downloadable) computer software for data mining, data query, and data analysis, in international class 9;

 

Printed brochures, manuals, periodicals, and magazines featuring (SPECIFY subject matter, e.g., information about computers, etc.); printed matter, namely, printed columns and articles featuring (SPECIFY subject matter, e.g., information about computers, etc.); printed advertisement and publicity literature, namely, (SPECIFY type literature, e.g., pamphlets, etc.—please note this must be a goods in trade and not used to advertise applicant’s own goods/services); catalogues in the field of (SPECIFY specific field of use, e.g., computers, etc.);  printed flyers, pamphlets, booklets, and reports featuring information about hoarding; printed advertisement boards of paper and cardboard; cards of all kinds, namely, (SPECIFY type of cards, e.g., filing cards, note cards, etc.); letterhead paper, calendars and diaries; paper and paper articles, namely, (SPECIFY type of paper articles, e.g., construction paper, etc.), in international class 16;

 

Providing business intelligence services; market intelligence services; computerized data processing; business data analysis services in the field of (SPECIFY field or industry, e.g., computers, etc.); systematization of data into computer databases; computer aided business management services; online media monitoring services using computer software to automatically monitor internet websites and online publications for customer-specified topics and to capture relevant content on those topics, and providing documentation and analysis of that online content to others for business purposes; advisory services relating to data processing; online business research services that allow users to analyze marketing trends, enable to realize increased return on your analytics investments; business research and evaluation of (SPECIFY subject matter., computers, etc.); research services relating to business, namely, (SPECIFY type of services, e.g., market research, etc.); provision of commercial information from on-line databases, in international class 35;

 

Computer software design, development and programming services; design and development of computer software for database management; design and development of computer hardware and software; design of computer software for business intelligence; design and development of visualization technologies for helping the users discover actionable insights by presenting them with compact visual representations of data; research, consultation and development services in the field of computer software; computer systems analysis; providing temporary use of on-line non-downloadable software and cloud computing software for storing, combining, managing, tracking, creating reports and sharing data; design and development of computer hardware and software; scientific and technological services, namely, research and design in the field of (SPECIFY field, e.g., computer networking hardware, etc.); application service provider, namely, hosting, managing, developing, analyzing, and maintaining applications, software, and web sites, of others in the fields of business management; providing temporary use of web-based software application for (SPECIFY function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use); Software as a service (SAAS) featuring computer software for programming robots artificial intelligence; platform as a service (PAAS) featuring computer software platforms for (SPECIFY the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use); design of computer hardware and software for commercial analysis and reporting; consultancy in the field of programming and development of e-business portals, in international class 42.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or 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.

 

FOREIGN REGISTRATION

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Alex Seong Keam/

Attorney-Advisor

United States Patent and Trademark Office

Law Office 114

Phone: 571-272-9176

Email: alex.keam@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 16, 2019 for

U.S. Trademark Application Serial No. 88650234

 

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. 

 

 

/Alex Seong Keam/

Attorney-Advisor

United States Patent and Trademark Office

Law Office 114

Phone: 571-272-9176

Email: alex.keam@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 16, 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.”