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:  October 27, 2020

 

This application was approved for publication on September 11, 2020.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

IDENTIFICATION OF GOODS AND SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Applicant’s goods and services are identified as follows:

 

            Class 9:     Computer hardware, namely, routers, wireless network extenders and wireless access point (WAP) devices; wireless routers; wireless router nodes; downloadable computer firmware and downloadable computer software for controlling the operation of internet devices; downloadable computer firmware and software for controlling the operation of wireless networks and wireless access point (WAP) devices; downloadable computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks

 

            Class 38:   Telecommunications consultation services relating to wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and wireless telecommunications equipment; provision of information, advice and assistance relating to all the aforementioned services

 

            Class 42:   Telecommunications technology consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices

 

The identification of goods and services in International Classes 9 and 42 is accepted.

 

Services in International Class 38

The wording “provision of information, advice and assistance relating to all the aforementioned services” in the identification of services for International Class 38 must be clarified because it is too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must specify the services to which the information services and advice applies.  Moreover, the lead-in language of “Providing assistance” is indefinite.  In particular, this wording could encompass “providing financial assistance for rental of telecommunications and wireless communications equipment” in International Class 36 and “providing business management assistance in the field of telecommunications” in International Class 35.  See the following ID Manual entries:

 

            000      Providing information in the field of {indicate service-related subject matter or nature of information} [classification depends on subject matter]

000      Providing advice in the field of {indicate field or subject matter of advice – this information will control the classification of the service}

036      Providing financial assistance for {specify purpose of assistance, e.g., health care, public housing, food, etc.}

035      Business management assistance

 

 

Applicant may adopt the following identification of goods and services, if accurate [the examining attorney’s suggestions appear in bold, underlined text]:

 

            Class 9:     Computer hardware, namely, routers, wireless network extenders and wireless access point (WAP) devices; wireless routers; wireless router nodes; downloadable computer firmware and downloadable computer software for controlling the operation of internet devices; downloadable computer firmware and software for controlling the operation of wireless networks and wireless access point (WAP) devices; downloadable computer software for connecting, managing, securing and operating local and wide area networks; Software, namely, downloadable communication application software for establishing and managing Internet connections among multiple wireless devices, in particular, access points, routers, and wireless networks

 

            Class 35:   Business management assistance in the field of telecommunications

 

            Class 36:   Providing financial assistance for the rental of telecommunications and wireless communications equipment

 

            Class 38:   Telecommunications consultation services relating to wireless networks, wireless routers and wireless access point (WAP) devices; rental of telecommunication and wireless telecommunications equipment; provision of information, advice and assistance relating to all the aforementioned services, namely, providing information and advisory services in the field of telecommunications, telecommunications consultation services and telecommunications equipment rental 

 

            Class 42:   Telecommunications technology consultancy and information in the field of routers, wireless networks and wireless access point (WAP) devices

 

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).

 

ID Manual Online

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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

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 five classes; however, applicant submitted a fee(s) sufficient for only three 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 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

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.    

 

 

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 October 27, 2020 for

U.S. Trademark Application Serial No. 88764833

 

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. 

 

 

Kertgate, Amy

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 October 27, 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.”