Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 05, 2020

 

This Office action is in response to applicant’s communication filed on June 8, 2020.

 

In a previous Office Action dated April 20, 2020, applicant was required to respond to an Identification of Goods Requirement. Applicant responded by amending the identification of goods.

 

Based on applicant’s response, the Identification of Goods Requirement is now made FINAL for the reasons set forth below. See 37 C.F.R. §§2.32(a)(6), 2.63(b); TMEP §1402.01.

 

IDENTIFICATION OF GOODS REQUIREMENT

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wording “Providing temporary use of non-downloadable cloud-based software for innovation with specific features to enable the process of innovation procedures; Providing temporary use of on-line non-downloadable cloud computing software for innovation with specific features to enable the process of innovation procedures” in the identification of services is indefinite and must be clarified because the function of the software is vague and ambiguous. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Significantly, “innovation” does not identify any software function with sufficient particularity. In order to facilitate likelihood of confusion determinations, the IDs should be amended to clarify the function and, if field- or content-specific, the specific field or content. See, e.g. ID Manual entry “Providing a web site featuring temporary use of non-downloadable software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}.”

 

Applicant may substitute the following wording, if accurate:  

 

International Class 035:          “Consulting services in business organization and management; Consulting services, namely, expert analysis and management consulting in economics and accounting; Business consulting services in the field of organizational change management; Business consulting, management, planning and supervision; Business management consulting; Business management consulting and advisory services; Business management consulting and advisory services for the innovation consulting industry; Business management consulting in the field of team development; Business management consulting services in the field of innovation; Business organisation and management consulting services; Business organization and management consulting; Personnel management consulting”

 

International Class 042:          “Consulting in the field of IT project management; Consulting services in the field of cloud computing; Design and development of computer software with specific features to enable the process of innovation procedures; Providing temporary use of non-downloadable cloud-based software for {indicate function of the software, e.g., innovative monitoring energy consumption, innovative calculation of energy costs, etc.} with specific features to enable the process of innovation procedures; Providing temporary use of on-line non-downloadable cloud computing software for {indicate function of the software, e.g., innovative database management, innovative word processing, etc.} with specific features to enable the process of innovation procedures”

 

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

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 042 will be deleted from the application: “Providing temporary use of non-downloadable cloud-based software for innovation with specific features to enable the process of innovation procedures; Providing temporary use of on-line non-downloadable cloud computing software for innovation with specific features to enable the process of innovation procedures” in International Class 042.

 

The application will then proceed with the following services in International Classes 035 and 042 only: 

 

International Class 035:          “Consulting services in business organization and management; Consulting services, namely, expert analysis and management consulting in economics and accounting; Business consulting services in the field of organizational change management; Business consulting, management, planning and supervision; Business management consulting; Business management consulting and advisory services; Business management consulting and advisory services for the innovation consulting industry; Business management consulting in the field of team development; Business management consulting services in the field of innovation; Business organisation and management consulting services; Business organization and management consulting; Personnel management consulting”

 

International Class 042:          “Consulting in the field of IT project management; Consulting services in the field of cloud computing; Design and development of computer software with specific features to enable the process of innovation procedures”

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

TRADEMARK COUNSEL SUGGESTED

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information. 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Obieze Mmeje/

Examining Attorney

Law Office 122

(571) 272-7694

Obieze.Mmeje@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 July 05, 2020 for

U.S. Trademark Application Serial No. 88742889

 

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. 

 

 

/Obieze Mmeje/

Examining Attorney

Law Office 122

(571) 272-7694

Obieze.Mmeje@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 July 05, 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.”