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 07, 2019

 

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.

 

Office Records Search:

 

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 and Classification of Goods and/or Services:

 

The wording in the identification is indefinite and must be clarified, and also includes goods and/or services that may be included in several different classes, as explained below.  See TMEP §§1402.01 and 1402.03.

 

Specifically, the nature of the software must be more clearly defined, as it is unclear whether this is communications software to allow the user to access information on the Internet, database software, etc.

For applicant’s provision of information, applicant should note that providing information is classified according to the nature of the information provided, and so must be clarified where indicated below.

 

Applicant should also note that customer service is generally classified in International Class 35, and that trouble-shooting would be classified by the nature of the service, so that advice about the installation of things would be in International Class 37, etc.

 

In International Class 42, applicant must clarify that its online system is in the nature of software, if accurate.

 

Finally, applicant’s online portal appears to be a website, the classification of which depends on the information provided on the site, as suggested below.

 

Applicant may adopt the following identification, if accurate:

 

International Class 9 – Downloadable mobile applications in the nature of communications software to enable users to access online information in the field of vehicle parts, the installation thereof and vehicle repair and maintenance, to interact with and exchange information with support personnel regarding vehicle parts, the installation thereof and vehicle repair and maintenance, to access online videos, instruction manuals and articles in the field of vehicle parts, the installation thereof and vehicle repair and maintenance, and to order vehicle parts and track their purchase and shipping; Downloadable videos, instruction manuals and articles in the field of vehicle parts, the installation thereof and vehicle repair and maintenance

 

International Class 35 – Customer service, namely, interactive online help desk services involving responding to customers’ inquiries for others in the field of vehicle parts, the installation thereof and vehicle repair and maintenance

 

International Class 37 – Providing information in the field of the installation of vehicle parts, vehicle repair, and vehicle maintenance; Consulting in the field of the installation of vehicle parts, vehicle repair, and vehicle maintenance; Trouble-shooting in the nature of providing advice and interactive online advice in the field of the installation of vehicle parts, vehicle repair, and vehicle maintenance

 

International Class 38 – Providing an online forum in the field of vehicle parts, the installation thereof and vehicle repair and maintenance

 

International Class 42 – Providing a web-based system in the nature of online, non-downloadable software that enables users to access online information in the field of vehicle parts, the installation thereof and vehicle repair and maintenance, to interact with and exchange information with support personnel regarding vehicle parts, the installation thereof and vehicle repair and maintenance, to access online videos, instruction manuals and articles in the field of vehicle parts, the installation thereof and vehicle repair and maintenance, and to order vehicle parts and track their purchase and shipping

 

For the online portal, applicant may adopt as many of the following as may be accurate:

 

International Class 37 – Providing an online portal in the nature of a website featuring information in the field of vehicle repair and maintenance

 

International Class 41 – Providing an online portal in the nature of a website featuring non-downloadable videos in the field of vehicle repair and maintenance

 

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.  An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

Multiple Class Applications:

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 6 classes; however, applicant submitted a fee(s) sufficient for only 4 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See 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.

 

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.    

 

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. 

 

 

/James W. MacFarlane/

Examining Attorney

Law Office 104

(571) 270-1512 (phone)

(571) 270-2512 (fax)

james.macfarlane@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 07, 2019 for

U.S. Trademark Application Serial No. 88677511

 

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. 

 

 

/James W. MacFarlane/

Examining Attorney

Law Office 104

(571) 270-1512 (phone)

(571) 270-2512 (fax)

james.macfarlane@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 07, 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.”