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:  March 09, 2020

 

 

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 OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

 

Identification of Goods/Services

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please see below for detailed explanations.

 

International Class 9

The wording “computer software platforms” is not acceptable.  The entry “Computer software platforms for {indicate function or use}” was deleted from U.S. Acceptable Identification of Goods and Services Manual on January 1, 2020 in compliance with Nice Agreement. Under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.

 

International Class 42

The wording “providing user authentication services” is not acceptable because it does not specify how the authentication services are carried out such as “providing user authentication services using single sign-on technology for online software applications” or “providing user authentication services using blockchain-based software technology for cryptocurrency transactions.”  Clarification is required.

 

 

Applicant may adopt the following identification, if accurate: 

 

 

INTERNATIONAL CLASS 009:  Downloadable and recorded computer software platforms for operating distributed applications for managing and monitoring inventory, as well as verifying and validating transactions and payments using blockchain technology including blockchain-based smart contracts

 

INTERNATIONAL CLASS 042:  providing user authentication services using _______ [specify means, e.g., single sign-on technology] to enable secure blockchain-based transactions

 

 

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.

 

 

.Significance of Wording

 

To permit proper examination of the application, applicant must explain whether the wording “TAAS” in the mark has any significance in the computer software platform and authentication trade or industry or as applied to applicant’s goods and services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

 

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

 

 

/Sally Shih/

Trademark Examining Attorney

Law Office 106

United States Patent & Trademark Office

sally.shih@uspto.gov

571-272-9712

 

 

 

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 March 09, 2020 for

U.S. Trademark Application Serial No. 88708763

 

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. 

 

 

/Sally Shih/

Trademark Examining Attorney

Law Office 106

United States Patent & Trademark Office

sally.shih@uspto.gov

571-272-9712

 

 

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 March 09, 2020, 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.”