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:  April 01, 2020

The assigned examining attorney has reviewed the referenced application and determined the following.

SEARCH RESULTS

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, before the mark can be published, the applicant must address the following.

 

IDENTIFICATION OF GOODS IN CLASS 9

 

The highlighted wording “computers; computer hardware; integrated computer hardware and computer operating software; computer hardware with preinstalled computer operating software; computer servers; a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, human capital management, public sector administration, public and private utilities, transportation, insurance, processing, analysis and management of financial transactions, governance, risk and compliance management for use in the fields of finance, banking, insurance and capital markets, corporate financials, and corporate governance, risk and compliance, project portfolio management, supply chain management, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business risk management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; database software to manage, monitor, track and organize data; computer software, namely, a full line of middleware software; electronic publications, namely, books, pamphlets, and user manuals concerning computer software and hardware, and related topics, and electronic catalogues offering such goods” in the identification of goods is indefinite and must be clarified to indicate the specific nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Specifically, the identification for “software” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable.  See id.  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). 

 

The following are examples of acceptable identifications in International Class 9:  “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications in International Class 41:  “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.”  Finally, the following are acceptable identifications in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”

 

Applicant may substitute the following wording, if accurate: 

 

 

“computers; computer hardware; integrated computer hardware and downloadable computer operating software; computer hardware with preinstalled computer operating software; computer servers; a full line of downloadable computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; downloadable computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; downloadable computer software applications in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, human capital management, public sector administration, public and private utilities, transportation, insurance, processing, analysis and management of financial transactions, governance, risk and compliance management for use in the fields of finance, banking, insurance and capital markets, corporate financials, and corporate governance, risk and compliance, project portfolio management, supply chain management, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business risk management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; downloadable database software to manage, monitor, track and organize data; downloadable computer software, namely, a full line of middleware software; electronic publications, namely, books, pamphlets, and user manuals concerning computer software and hardware, and related topics, and electronic catalogues offering such goods

.

RECITATION OF SERVICES IN CLASS 35

 

Applicant has classified “licensing software” in International Class 35; however, the proper classification is International Class 45.  Therefore, applicant may respond by (1) adding International Class 45 to the application and reclassifying these services in the proper international class, (2) deleting licensing software from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

RECITATION OF SERVICES IN CLASS 38

 

The wording “broadcasting and communication services, namely, providing a computer network for delivery of computer programs, graphics, text, and other data and information” in the identification of services is indefinite and must be clarified to indicate the specific nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  broadcasting and communication services by means of a computer network for delivery of computer programs, graphics, text, and other data and information.

 

RECITATION OF SERVICES IN CLASS 42

 

The highlighted wording “computer services, namely, consultation in the field of computer software, computers and computer hardware; programming, design, development, implementation, maintenance, updating and repair of computer software for others; technical support services for computer software, namely, providing updates, upgrades, patches, fixes and technical documentation; providing information via the internet in the fields of computers, computer hardware, computer programming, and computer software; computer services, namely, creating and maintaining web sites for others; hosting the web sites of others on computer servers for local area networks, intranets, and the Internet; consultation services and providing technical assistance related to the design, creation, hosting, maintenance, operation, and management of web sites for others; and providing information in the fields of computers and computer software; on-line retail store services in the field of computer programs for business, entertainment, scientific, technical, commercial, educational and personal computing uses, and printed material related thereto; hosting of computer software; leasing and rental of computer hardware; leasing access to computer hardware; computer services, namely, providing access to non-downloadable computer software; computer services, namely, providing computer software, platforms, infrastructure, databases and data as a service; computer services, namely, providing cloud computing services in the following fields: a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; database software to manage, monitor, track and organize data; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, computer software to automate data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, and computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications to manage, monitor, track and organize data in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing computer software as a service (SaaS) to collect, manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing platforms as a service (PaaS) and infrastructure as a service (IaaS) featuring computer software and hardware platforms for creating web applications, data storage and backup, database management, virtualization, networking, collaboration, access, support, cloud computing, data sharing, data security, administration and management of computer software and hardware, and distribution and transmission of data and information; computer services, namely, providing databases as a service (DBaaS), namely, cloud hosting of computer databases for others; computer services, namely, providing data as a service through a customizable software platform for collecting, analyzing, integrating, transforming and providing access to data and information; platform as a service (PAAS) featuring computer software platforms for multi-chain, multi-cloud network management that deploys nodes and connects them to blockchains, and that enables users to manage blockchain applications; providing on-line non-downloadable computer software for enabling users to electronically create, exchange, store, send, receive, accept, and transmit digital tokens based on the blockchain technology; computer services, namely, providing on-line non-downloadable computer software for developing, building, and operating distributed applications; software as a service (SAAS) services featuring software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using blockchain technology; platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security computer software for blockchain-based platforms; electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information; developing and updating of computer software for use in managing blockchain data; application service provider (ASP) featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; application service provider (ASP), namely, hosting computer application software for the purpose of developing, testing, and integrating blockchain applications and software; software as a service (SAAS) featuring software for developing, deploying, updating, and monitoring the performance of machine learning, deep learning, data science, predictive analytics, automation, and artificial intelligence applications; platform as a service (PAAS) featuring computer software platforms for building, hosting, and deploying chatbots and digital assistants; software as a service (SAAS) services featuring software for building, hosting, and deploying chatbots and digital assistants; application service provider (ASP) featuring application programming interface (API) software for building, hosting, and deploying chatbots and digital assistants; consulting services in the field of software as a service (SAAS), namely, providing machine learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systems” in the identification of services is indefinite and must be clarified to indicate the specific nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

computer services, namely, consultation in the field of computer software, computers and computer hardware; programming, design, development, implementation, maintenance, updating and repair of computer software for others; technical support services for computer software, namely, providing updates, upgrades, patches, fixes and technical documentation; providing information via the internet in the fields of computers, computer hardware, computer programming, and computer software; computer services, namely, creating and maintaining web sites for others; hosting the web sites of others on computer servers for local area networks, intranets, and the Internet; consultation services and providing technical assistance related to the design, creation, hosting, maintenance, operation, and management of web sites for others; and providing an Internet website portal offering information in the fields of computers and computer software; hosting of computer software of others on a virtual private server; leasing of computer hardware for use in {specify, e.g., point-of-sale transactions, etc.}and rental of computer hardware; leasing of computer hardware; computer services, namely, providing temporary use of non-downloadable computer software for (specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if  software is content- or field-specific, the field of use); computer services, namely, providing computer software, platforms, infrastructure, databases and data as a service; computer services, namely, providing cloud computing services in the field of a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; providing temporary use of on-line downloadable database software to manage, monitor, track and organize data; providing temporary use of on-line downloadable computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, computer software to automate data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, and computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; providing temporary use of on-line downloadable computer software applications to manage, monitor, track and organize data in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing computer software as a service (SaaS) to collect, manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing platforms as a service (PaaS) and infrastructure as a service (IaaS) featuring computer software and hardware platforms for creating web applications, data storage and backup, database management, virtualization, networking, collaboration, access, support, cloud computing, data sharing, data security, administration and management of computer software and hardware, and distribution and transmission of data and information; computer services, namely, providing databases as a service (DBaaS), namely, cloud hosting of computer databases for others; computer services, namely, providing data as a service through a customizable software platform for collecting, analyzing, integrating, transforming and providing access to data and information; platform as a service (PAAS) featuring computer software platforms for multi-chain, multi-cloud network management that deploys nodes and connects them to blockchains, and that enables users to manage blockchain applications; providing on-line non-downloadable computer software for enabling users to electronically create, exchange, store, send, receive, accept, and transmit digital tokens based on the blockchain technology; computer services, namely, providing on-line non-downloadable computer software for developing, building, and operating distributed applications; software as a service (SAAS) services featuring software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using blockchain technology; platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security computer software for blockchain-based platforms; electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information; developing and updating of computer software for use in managing blockchain data; application service provider (ASP) featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; application service provider (ASP), namely, hosting computer application software for the purpose of developing, testing, and integrating blockchain applications and software; software as a service (SAAS) featuring software for developing, deploying, updating, and monitoring the performance of machine learning, deep learning, data science, predictive analytics, automation, and artificial intelligence applications; platform as a service (PAAS) featuring computer software platforms for building, hosting, and deploying chatbots and digital assistants; software as a service (SAAS) services featuring software for building, hosting, and deploying chatbots and digital assistants; application service provider (ASP) featuring application programming interface (API) software for building, hosting, and deploying chatbots and digital assistants; consulting services in the field of software as a service (SAAS), namely, providing machine learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systems

 

Applicant has classified “on-line retail store services in the field of computer programs for business, entertainment, scientific, technical, commercial, educational and personal computing uses, and printed material related thereto” in International Class 42; however, the proper classification is International Class 35.  Therefore, applicant may respond by adding these services to International Class 35.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

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.

 

PARTIAL ABANDONMENT

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 9 will be deleted from the application: 

 

computer operating software; computer hardware with preinstalled computer operating software; a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, human capital management, public sector administration, public and private utilities, transportation, insurance, processing, analysis and management of financial transactions, governance, risk and compliance management for use in the fields of finance, banking, insurance and capital markets, corporate financials, and corporate governance, risk and compliance, project portfolio management, supply chain management, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business risk management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; database software to manage, monitor, track and organize data; computer software, namely, a full line of middleware software.

 

The application will then proceed with the following goods in International Class 9 only:  “computers; computer hardware; integrated computer hardware; computer servers; electronic publications, namely, books, pamphlets, and user manuals concerning computer software and hardware, and related topics, and electronic catalogues offering such goods.”  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 35 will be deleted from the application:  licensing software.  The application will then proceed with the following services in International Class 35 only:  analysis and consulting services in the field of business information management, namely, business analysis, business enterprise modeling, and business information organization; developing, arranging and conducting trade shows in the fields of computers, software, information technology, and cloud services development; promoting sports competitions and events of others.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

If applicant does not respond to this Office action within the six-month period for response, International Class 38 will be deleted from the application.   See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 42 will be deleted from the application:  providing information in the fields of computers and computer software; on-line retail store services in the field of computer programs for business, entertainment, scientific, technical, commercial, educational and personal computing uses, and printed material related thereto; hosting of computer software; leasing of computer hardware; leasing access to computer hardware; computer services, namely, providing access to non-downloadable computer software; computer services, namely, providing cloud computing services in the following fields: a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; database software to manage, monitor, track and organize data; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, computer software to automate data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, and computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications to manage, monitor, track and organize data in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The application will then proceed with the following services in International Class 42 only: computer services, namely, consultation in the field of computer software, computers and computer hardware; programming, design, development, implementation, maintenance, updating and repair of computer software for others; technical support services for computer software, namely, providing updates, upgrades, patches, fixes and technical documentation; providing information via the internet in the fields of computers, computer hardware, computer programming, and computer software; computer services, namely, creating and maintaining web sites for others; hosting the web sites of others on computer servers for local area networks, intranets, and the Internet; consultation services and providing technical assistance related to the design, creation, hosting, maintenance, operation, and management of web sites for others; rental of computer hardware; leasing access to computer hardware; computer services, namely, providing computer software, platforms, infrastructure, databases and data as a service; computer services, namely, providing computer software as a service (SaaS) to collect, manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing platforms as a service (PaaS) and infrastructure as a service (IaaS) featuring computer software and hardware platforms for creating web applications, data storage and backup, database management, virtualization, networking, collaboration, access, support, cloud computing, data sharing, data security, administration and management of computer software and hardware, and distribution and transmission of data and information; computer services, namely, providing databases as a service (DBaaS), namely, cloud hosting of computer databases for others; computer services, namely, providing data as a service through a customizable software platform for collecting, analyzing, integrating, transforming and providing access to data and information; platform as a service (PAAS) featuring computer software platforms for multi-chain, multi-cloud network management that deploys nodes and connects them to blockchains, and that enables users to manage blockchain applications; providing on-line non-downloadable computer software for enabling users to electronically create, exchange, store, send, receive, accept, and transmit digital tokens based on the blockchain technology; computer services, namely, providing on-line non-downloadable computer software for developing, building, and operating distributed applications; software as a service (SAAS) services featuring software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using blockchain technology; platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security computer software for blockchain-based platforms; electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information; developing and updating of computer software for use in managing blockchain data; application service provider (ASP) featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; application service provider (ASP), namely, hosting computer application software for the purpose of developing, testing, and integrating blockchain applications and software; software as a service (SAAS) featuring software for developing, deploying, updating, and monitoring the performance of machine learning, deep learning, data science, predictive analytics, automation, and artificial intelligence applications; platform as a service (PAAS) featuring computer software platforms for building, hosting, and deploying chatbots and digital assistants; software as a service (SAAS) services featuring software for building, hosting, and deploying chatbots and digital assistants; application service provider (ASP) featuring application programming interface (API) software for building, hosting, and deploying chatbots and digital assistants; consulting services in the field of software as a service (SAAS), namely, providing machine learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systems” in the identification of services is indefinite and must be clarified to indicate the specific nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

ADDITIONAL CLASSES

 

If applicant adds any additional classes to the application they must satisfy all the requirements below for each international class:

 

(1)     List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)     Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)     Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)     Submit a specimen for each international class applicant needs a specimen for class 45.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(5)     Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

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.    

 

 

/Midge F. Butler/

Trademark Attorney

Law Office 107

571 272 9137

midge.butler@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 April 01, 2020 for

U.S. Trademark Application Serial No. 88742058

 

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. 

 

 

/Midge F. Butler/

Trademark Attorney

Law Office 107

571 272 9137

midge.butler@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 April 01, 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.”