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:  May 26, 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 RESULTS

 

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.

 

However, before examination may proceed, the applicant must address the following issues:

 

Summary of Issues:

 

• Identification/Classification of Goods/Services Requires Amendment
• Disclaimer Required
• Description of the Mark/Color Claim Require Clarification/Amendment
• Specimen Not Acceptable/Requirements Not Met/Limited to Class 42

 

IDENTIFICATION OF GOODS/SERVICES REQUIRES AMENDMENT

 

The identification for software, computer programs, mobile applications, and firmware in International Class 9 is indefinite and too broad and must be clarified to specify whether the 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.  See TMEP §1402.03(d). Any online, non-downloadable software, computer programs, mobile applications, and firmware must be amended to Class 42, if applicable.

 

Further, the wording “Platform validation and testing services; Providing platform security, secure boot, and secure firmware signing,” in Class 42 must be clarified as to the nature of the services, as indicated below.

 

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 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).

 

Applicant may adopt one or more of the following identification of goods and services in the appropriate international class, if accurate.  TMEP §1402.01. 

 

Class 9

 

Downloadable computer program for diagnosing computer hardware in the nature of conducting diagnostics between operating system and peripheral devices and conducting comprehensive testing for all system components; downloadable computer software in the nature of an interface between operating system and peripheral devices; downloadable computer software and firmware for computing systems in the nature of an interface between operating system and peripheral devices; Integrated circuits; computer hardware; computer integrated circuits; motherboards; downloadable operating software for motherboards; downloadable BIOS (basic input output system) computer programs; downloadable computer operating programs and computer operating systems; downloadable computer software development tools; downloadable computer utility programs; downloadable computer programs for systems management; downloadable computer software for interfacing, testing, and controlling computer compatible hardware and peripherals; downloadable computer software in the nature of an interface between an operating system and peripheral devices; downloadable computer programs and computer circuitry for interface management between a computer and data entry apparatus; computer hardware and downloadable software used for diagnosing problems with other computer hardware and software; downloadable computer software based on a third party platform framework for Extensible Firmware Interface (EFI) for enabling and developing firmware; computer hardware and downloadable software for backup, data storage, and file management; downloadable computer software for the transfer of data over computer networks; computer hardware-based remote server management controllers, namely, peripheral component interface (PCI) plug-in cards for use in monitoring and reporting system wide status and fault conditions and downloadable software for use in operating assistant server controllers used in the field of computer software engineering; computer hardware and downloadable software applications for network attached storage systems, web servers, and embedded environments; downloadable computer software program used for connecting computer peripherals to universal serial bus-equipped computers and mobile devices; downloadable computer program incorporating a graphical user interface used for monitoring error conditions on a computer system, for reporting events and failures associated with error conditions on a computer system, and for making entries in a computer system log regarding error conditions on a computer system; communications servers; downloadable communications software for connecting computer network users and for connecting global computer networks; computer hardware and downloadable software for setting up and configuring local area network; computer hardware and downloadable software for setting up and configuring wide area networks; computer hardware for communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks; downloadable computer programs for connecting remotely to computers or computer networks; downloadable computer programs for the enabling of access or entrance control; downloadable computer software for communicating with users of hand-held computers; downloadable computer software for computer system and application development, deployment, and management; downloadable computer software for controlling and managing access server applications; downloadable computer encryption and decryption software; downloadable computer software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer software for the creation of firewalls; downloadable computer software, namely, software development tools for the creation of mobile internet applications and client interfaces; downloadable computer software that allows users to sync email, contacts, and other digital and multimedia content from a desktop computer to a mobile device; computer hardware, downloadable computer software, electronic sensor devices, cameras, projectors, microphones, and peripherals used for capturing gesture, facial, and voice recognition for the touchless control of computers, phones and other communications devices, and other multimedia devices; downloadable computer software used for capturing gesture, facial, and voice recognition for the touchless control of computers, phones and other communications devices, and other multimedia devices; Hardware-based remote server management controllers, namely, Peripheral Component Interface (PCI) plug-in cards for use in monitoring and reporting system wide status and fault conditions, and software for use in operating assistant server controllers used in the field of computer software engineering; downloadable computer software based on a third party platform framework for Extensible Firmware Interface for enabling and developing firmware; computer integrated circuits [duplicate]; downloadable computer software for interfacing and testing computer compatible hardware; downloadable computer software and firmware for operating system programs

 

Class 42

 

Computer software design; computer software design for others; computer software development; design and development of computer software; design and development of computer hardware and software for others; computer software installation and maintenance; debugging computer software for others; custom design services, namely, custom design of computer hardware and software to the specification of others; design and development of computer firmware; Engineering design services; computer platform installation and maintenance services, namely, computer platform validation and testing services; computer security services, namely, providing computer platform security, secure boot, and secure firmware signing, through {indicate means of delivery, e.g., providing online, non-downloadable software for user authentication and performance monitoring; monitoring of computer systems by remote access; administering digital keys}

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the descriptive wording “POWER MANAGE SECURE” apart from the mark as shown because, as evidenced by the applicant’s identification of goods and services, which includes  “integrated circuits; computer programs for systems management, computer software for controlling and managing access server applications, computer software for the creation of firewalls, providing platform security, secure boot, and secure firmware signing,” and the specimen of record which identifies a feature, among others, of applicant’s services as “power management support,”  the wording merely indicates the intended use, and relevant features of the applicant’s goods and services.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements, or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods and/or services.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods and/or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03.

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “POWER MANAGE SECURE” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

DESCRIPTION OF MARK/ COLOR CLAIM REQUIRE CLARIFICATION/ AMENDMENT

 

The drawing shows the applied-for mark in various colors, including black and white; however, the color claim and description of the mark do not reference the colors black and white.  The color claim and description must be complete and reference all the colors in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  Therefore, applicant must clarify whether black and white are used as colors in the mark or to indicate background, outlining, shading, and/or transparent areas.  TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

Further, the description is incomplete and does not reference all elements of the mark.

 

To clarify how black and white are being used in the mark, applicant may satisfy one of the following:

 

(1)        If black and/or white are a feature of the mark, applicant must amend the color claim to include them, as applicable, and amend the description to identify where the black and white appear in the literal and/or design elements of the mark.  The following color claim and description is an example of an acceptable amendment, if accurate:

 

The colors black and red are claimed as a feature of the mark.

 

The mark consists of a red dimensional pyramid comprising separate bands forming the shape. The lowercase letters AMI appear to the right of the design in black, with a red shaded circle forming the dot on the I. The wording POWER MANAGE SECURE in black appears below AMI, with small red shaded circles separating the three words. The white in the mark represents transparent areas only, and is not claimed as a feature of the mark.

 

(2)        If black and white are not a feature of the mark, applicant must amend the description to state that black and white represent background, outlining, shading and/or transparent areas and are not part of the mark.  The following description is suggested, if accurate:

 

The mark consists of a red dimensional pyramid comprising separate bands forming the shape. The lowercase letters AMI appear to the right of the design, with a red shaded circle forming the dot on the I. The wording POWER MANAGE SECURE appears below AMI, with small red shaded circles separating the three words. The black and white in the mark represents shading and transparent areas only, and are not claimed as a feature of the mark.

 

TMEP §807.07(d).

 

SPECIMEN NOT ACCEPTABLE/REQUIREMENTS NOT MET/LIMITED TO CLASS 42

 

Webpage specimen does not include required URL and/or date printed/accessed.  Registration is refused, as to Class 42, because the specimen is not acceptable as a webpage specimen; it lacks the required URL and/or date printed/accessed.  See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020).  The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce.  See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.03(g), 904.07(a).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce.  37 C.F.R. §2.56(c).  Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. 

 

Examples of specimens.  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). 

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.

 

(2)        Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  Applicant must also submit the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”

 

(3)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen 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.

 

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

 

 

/Ellen F. Burns/

Examining Attorney

Law Office 116

571.272.9098

ellen.burns@uspto.gov

(email for informal communications only)

 

 

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 May 26, 2020 for

U.S. Trademark Application Serial No. 88805017

 

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. 

 

 

/Ellen F. Burns/

Examining Attorney

Law Office 116

571.272.9098

ellen.burns@uspto.gov

(email for informal communications only)

 

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 May 26, 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.”