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 03, 2020

 

 

 

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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.

 

SUMMARY OF ISSUES

 

• Identification and Classification of Goods – Required
• Multiple-Class Application Requirements – Advisory

 

IDENTIFICATION AND CLASSIFICATION OF GOODS – REQUIRED

 

PLEASE NOTE: 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/tidmn.html.  See TMEP §1402.04.

 

The identification of goods and services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.  See suggested amended wording below.

 

Applicant has included the term “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all of the identified goods or services.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language.    See suggested amended wording below.

 

Specific wording in the identification for International Class 9 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

The wording “monitors” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “heart rate monitors” in International Class 10 and “TV monitors” in International Class 9.  See suggested amended wording below.

 

 

Additionally, the identification for software in International Classes 9 and 42 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; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

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).  See suggested amended wording below.

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: Data storage apparatus, namely, _____ {indicate specific goods, e.g., blank tapes for storage of computer data, computer storage devices being high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network}; data processing apparatus; data processing equipment, namely, _____ {indicate specific goods, e.g., interface cards for data processing equipment in the form of printed circuits, couplers}; central processing units (processors); disk drives for computers; blank USB flash drives; data retrieving machines, namely, _____ {indicate specific goods, e.g., calculating machines and data processing equipment, computers}; programmable data access processors; computers; wearable computers in the nature of _____ {indicate specific goods, e.g., smartwatches, smartglasses}; random access memory (RAM) modules, namely, RAM card; random access memory (RAM) card; computer programs, downloadable, for _____ {specify the function of the program, e.g., use in database management, use as a spreadsheet, etc., and, if the software is content- or field-specific, the content or field of use}; computer programs, recorded, for _____ {specify the function of the program, e.g., use in database management, use as a spreadsheet, etc., and, if the software is content- or field-specific, the content or field of use}; computer operating programs, recorded; monitors being downloadable (computer programs) for _____ {specify the function of the program, e.g., use in database management, use as a spreadsheet, etc., and, if the software is content- or field-specific, the content or field of use}; downloadable computer mobile phone applications software for mobile phones, namely, software for _____ {specify the function of the programs, e.g., use in database management, use in electronic storage of data}; computer software applications, downloadable, for _____ {specify the function of the program, e.g., use in database management, use as a spreadsheet, etc., and, if the software is content- or field-specific, the content or field of use}; downloadable software in the nature of application programs, downloadable, for _____ {specify the function of the program, e.g., use in database management, use as a spreadsheet, etc., and, if the software is content- or field-specific, the content or field of use}; computer workstations (hardware) comprising _____ {specify major computer hardware components}; computer terminals; Internet devices, namely, _____ {indicate specific goods, e.g., computers, mobile phones}; network servers; couplers being (data processing equipment); computer hardware; video screens; touch panels; interactive touch screen terminals; computer software platforms, recorded or and downloadable, for _____ {specify the function of the program, e.g., use in database management, use as a spreadsheet, etc., and, if the software is content- or field-specific, the content or field of use}; downloadable computer software development tools; programming tools, namely, downloadable computer software development tools; data media, namely, _____ {indicate specific goods, e.g., blank magnetic disks, blank optical disks}; image downloaded from the Internet, namely, downloadable image files containing _____ {indicate subject matter or field, e.g., automobiles, cats and dogs}; downloadable image files containing _____ {indicate content or subject matter}; optical video cameras; camcorders; digital cameras; projector light source devices, namely, _____ {indicate specific goods, e.g., projector lamps, picture projectors, LCD projectors}; thermal imaging cameras; 3D image receiving glasses, namely, 3D spectacles; digital audio synthesizers, namely, _____ {indicate specific goods, e.g., frequency synthesizers}; audio speaker signal processors; audio/ -video receivers; sound transmitting apparatus; image transfer apparatus, namely, _____ {indicate specific goods, e.g., photo printers}; sound recording apparatus; image recording apparatus; sound reproduction apparatus; image duplication apparatus, namely, apparatus for reproduction of images; portable media players; digital photo frames; electronic communications instruments and components, namely, multi-function digital transmitters; monitoring apparatus, other than for medical purposes, namely, _____ {indicate specific goods, e.g., wireless controllers to monitor and control the functioning of other electronic devices}; monitors, namely, _____ {indicate specific goods, e.g., battery monitors, TV monitors}; smartphones; downloadable computer application software for smartwatches, namely, software for incoming call reminders; video conference devices, namely, _____ {indicate specific devices, mobile phones, PC tablets}; VoIP telephones adapter; communication devices, namely, _____ {indicate specific goods, e.g., mobile phones, computers}; communication apparatus, namely, _____ {indicate specific goods, e.g., antennas for wireless communication, apparatus for transmission of communication}; telecommunication apparatus in the nature of wireless receivers in the form of jewellery; network communication equipments, namely, _____ {indicate specific goods, e.g., headsets for remote communication, mobile phones}; smartwatches; connected bracelets (measuring instruments), namely, smartwatches; wearable activity trackers; wearable electronic devices, namely, _____ {indicate specific goods, e.g., smartwatches, smart glasses}

 

Class 10: Monitors, namely, _____ {indicate specific goods, e.g, pulse rate monitors, heart rate monitors}

 

Class 42: Computer software and computer programming design; computer software design; updating of computer software; maintenance of computer software; rental of computer software; consultancy for others in the field of computer software design; computer software consultancy; computer system analysis; computer system design; installation of computer software; duplication of computer software, namely, copying of computer software; computer virus protection services; design of electronic map computer software; rental of computer hardware; computer rental; providing temporary use of non-downloadable software applications accessible via a web site for _____ {indicate the function of web-based software, e.g., time management, sharing web-based documents, collaborating on shared documents}; computer programming services for data processing; rental of server memory space for web sites; rental of web servers; planning, design, development and maintenance of on-line web sites; planning, design, development and maintenance of on-line web sites for third parties; hosting computer sites being (web sites) of others on a computer server for a global computer network; maintenance of computer software relating to computer security and prevention of computer risks; computer security consultancy; data security consultancy; internet security consultancy; hosting Internet sites for others; consultancy relating to the design and development of computer hardware; computer technology consultancy; monitoring of computer systems by remote access to ensure proper functioning; monitoring of computer systems to detect breakdowns; monitoring of computer systems for detecting unauthorized access or data breach; providing temporary use of online non-downloadable cloud computing software for on-line electronic data storage; electronic data storage; computer data backup services, namely, _____ {indicate specific services, e.g., backup services for computer hard drive data, remote online backup of computer data}; off-site data backup; information technology (IT) consultancy; providing information on computer technology and programming via a web site; cloud computing featuring software for use _____ {indicate the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, and, if software is content- or field-specific, the field of use}; web site design consultancy; software as a service (SaaS) services featuring software for _____ {indicate the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}; outsource service providers in the field of information technology; unlocking of mobile phones; creating and designing website-based indexes of information for others using (information technology services); software development in the framework of software publishing; platform as a service (PaaS) featuring computer software platforms for _____ {indicate 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}; development of computer platforms

 

See TMEP §§1402.01, 1402.03.

 

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

 

Applicant should note the following advisory outlined below.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY

 

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 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 fees sufficient for only 2 classes.  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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

Megan Aurand

/Megan Aurand/

Examining Attorney

Law Office 128

(571) 272-1614

megan.aurand@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 March 03, 2020 for

U.S. Trademark Application Serial No. 88728433

 

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. 

 

 

Megan Aurand

/Megan Aurand/

Examining Attorney

Law Office 128

(571) 272-1614

megan.aurand@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 March 03, 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.”