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 27, 2020

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues Applicant Must Address

• Section 2(d) Refusal – Likelihood of Confusion
• Specimen Refusal – Specimen Omitted
• Requirement for Clarification of Color Claim and Mark Description
• Requirement for Acceptable Identification and Classification of Services
• Requirement for Signed and Verified Application
• Requirement for Information

 

This Office action also includes an advisory regarding earlier filed applications.

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2680334, 2680335, 3331304, 5071508, and 6028334.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant has applied to register ACUMEN combined with a triangle design for:

 

Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software, in Class 42. 

 

The registered marks are the following:

 

Registration No. 2680334 is ACUMEN SOLUTIONS ( “SOLUTIONS” disclaimed) in typed-drawing form for “BUSINESS MANAGEMENT CONSULTATION IN THE FIELDS OF TELECOMMUNICATIONS, WEB SITE DESIGN, IMPLEMENTATION, HOSTING AND MANAGEMENT, DESIGN, SELECTION, IMPLEMENTATION AND USE OF COMPUTE[R] NETWORK, HARDWARE AND SUPPORT SYSTEMS, AND INTEGRATION OF COMPUTE[R] SYSTEMS AND NETWORKS,” in Class 35, and “TECHNOLOGICAL CONSULTATION IN THE FIELDS OF TELECOMMUNICATIONS, WEB SITE DESIGN, IMPLEMENTATION, HOSTING AND MANAGEMENT, DESIGN, SELECTION, IMPLEMENTATION AND USE OF COMPUTER NETWORK, HARDWARE AND SUPPORT SYSTEMS, AND INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS,” in Class 42.

 

Registration No. 2680335 is ACUMEN SOLUTIONS and design (“SOLUTIONS” disclaimed) for “BUSINESS MANAGEMENT CONSULTATION IN THE FIELDS OF TELECOMMUNICATIONS, WEB SITE DESIGN, IMPLEMENTATION, HOSTING AND MANAGEMENT, DESIGN, SELECTION, IMPLEMENTATION AND USE OF COMPUTE NETWORK, HARDWARE AND SUPPORT SYSTEMS, AND INTEGRATION OF COMPUTE SYSTEMS AND NETWORKS,” in Class 35, and “TECHNOLOGICAL CONSULTATION IN THE FIELDS OF TELECOMMUNICATIONS, WEB SITE DESIGN, IMPLEMENTATION, HOSTING AND MANAGEMENT, DESIGN, SELECTION, IMPLEMENTATION AND USE OF COMPUTER NETWORK, HARDWARE AND SUPPORT SYSTEMS, AND INTEGRATION OF COMPUTER SYSTEMS AND NETWORKS,” in Class 42.

 

Registration No. 3331304 is ACUMEN SOLUTIONS DRIVE (“SOLUTIONS” disclaimed) in standard-character form for “Computer project management services; computer software development; consulting services in the field of design, selection, implementation and use of software systems for others and consulting services in the field of selection, implementation and use of computer hardware for others; design, development and implementation of software; providing quality assurance services in the field of business systems and operations support areas,” in Class 42.

 

Registration No. 5071508 is AB ACUMEN BIOPHARMA and design (“BIOPHARMA” disclaimed for “Consulting services for others in the field of pharmaceutical research, laboratory testing and project management of scientific research and laboratory testing,” in Class 42.  This registration also includes services in Class 45 not included in this refusal.

 

Registration No. 6028334 is ACUMEN CPG (“CPG” disclaimed) in standard-character form for “Product development; Product development consultation,” in Class 42.

 

Registration Nos. 2680334, 2680335, and 3331304 are all owned by the same entity.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

Comparison of the Services

 

Registration No. 3331304

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the applicant’s “design and development of computer hardware and software” is broad enough to include the registrant’s “computer software development; design, development . . . of software.”  The computer hardware part of the applicant’s services is thus closely related to the registrant’s services.  The applicant’s “quality control services” also appears to encompass the registrant’s “providing quality assurance services in the field of business systems and operations support areas.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).  The registrant’s consulting services are also closely related to the applicant’s “design and development of computer hardware and software,” which are in the same field.

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s services are related.

 

Registration Nos. 2680334 and 2680335

 

For similar reasons to the above consulting services, the applicant’s “design and development of computer hardware and software” is closely related to the consulting services in the same fields in these registrations.

 

Registration No. 5071508

 

The applicant’s “Scientific and technological services and research and design relating thereto; industrial analysis, industrial research . . . services; quality control . . . services” may include pharmaceutical research and/or laboratory testing, and thus is closely related to the consulting services in these fields in this registration.

 

Registration No. 6028334

 

The applicant’s “Scientific and technological services and . . . design relating thereto; industrial design services” may include the “Product development; Product development consultation” in this registration.  Thus, the services are closely related and in part identical.

 

Comparison of the Marks

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Registration Nos. 2680334 and 6028334

 

In this case, the applicant’s mark ACUMEN and the registered ACUMEN SOLUTIONS and ACUMEN CPG marks are similar in commercial impression.

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

All three marks include the term ACUMEN, which would be pronounced the same and attributed the same meaning in each mark. 

 

The registered marks are in typed-drawing and standard-character form.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Thus, the term ACUMEN in the registered marks may be displayed in the same font style as this term in the applicant’s mark.

 

The additional terms in the registered marks appear to be merely descriptive of characteristics of the respective services (CPG is an acronym for consumer packaged goods), and have been disclaimed.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Notably, the terms SOLUTIONS and CPG do not change the connotation of the common term ACUMEN.

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Here, the design element in the applicant’s mark is a small geometric design, a triangle, which does not change the connotation of the term ACUMEN.

 

Thus, when viewed in their entireties, the marks are similar in commercial impression.

 

Registration Nos. 2680335 and 5071508

 

For similar reasons, the applicant’s mark is similar in commercial impression to the mark ACUMEN SOLUTIONS combined with a design and ACUMEN BIOPHARMA with the stylized AB design.  The fonts used in each party’s marks do not change the connotation of the common term ACUMEN.  The descriptive disclaimed terms SOLUTIONS and BIOPHARMA do not change the connotation of the common term ACUMEN, and the design elements in the marks are essentially geometric designs that do not change the connotation of the common term ACUMEN.

 

Thus, when viewed in their entireties, the marks are similar in commercial impression.

 

Registration No. 3331304

 

The applicant’s mark ACUMEN in similar in commercial impression to the registered mark ACUMEN SOLUTIONS DRIVE for reasons similar to ACUMEN SOLUTIONS discussed above.  The applicant’s mark differs from this registered mark by the deletion of the additional term DRIVE. 

 

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.  Like SOLUTIONS, DRIVE does not change the meaning of the common term ACUMEN.

 

Thus, when viewed in their entireties, the marks are similar in commercial impression.

 

Since the marks are similar and the services are closely related and in part identical, there is a likelihood of confusion as to the source of applicant’s services.  Therefore, applicant’s mark is not entitled to registration, and registration is refused under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration in a formal response using the link at the bottom of this Office action.  Please note that informal communications (phone and email) may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal. TMEP §709.05.  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; TMEP §710.01(b). 

 

ADVISORY – Potential Section 2(d) Refusal – Likelihood of Confusion

 

The filing dates of pending U.S. Application Serial Nos. 88186080, 88310117, and 88259086 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant should note the following additional ground for refusal.

 

Specimen Refusal

 

Applicant has applied for registration of the mark ACUMEN and design for:

 

Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software, in Class 42.

 

In support of this application, applicant has submitted a specimen described as “wbe page.”  However, the record indicates that no image was attached. 

 

Specimen not submitted.  Registration is refused because the application does not include the required specimen showing the applied-for mark as actually used in commerce for the identified services.  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, 904.07(a), 1301.04(g)(i).  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/or services identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

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). 

 

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).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a verified specimen that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application.  A “verified specimen” is a specimen that is accompanied by 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.”  The specimen cannot be accepted without this statement.

 

(2)        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. 

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Color Claim and Mark Description

 

The mark is in color.  However, the application states that the mark is not in color, does not include a color claim, and include the following mark description with no claim as to color:

 

The mark consists of Acumen and N design.

 

Therefore, applicant must clarify whether color is a feature of the mark.  37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).

 

Applicant may respond to this requirement by satisfying one of the following:

 

(1)        If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing.  See TMEP §807.07(a)(i).  However, any other amendments to the drawing will not be accepted if they materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.14 et seq.  Applicant must also submit an accurate description of all literal and design elements in the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following description is suggested, if accurate:  The mark consists of the stylized wording “ACUMEN” and a triangle design.

 

(2)        If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).  The following color claim and description are suggested, if accurate: 

 

Color claim:  The colors blue and green are claimed as a feature of the mark.

 

Description:  The mark consists of the stylized blue wording "ACUMEN" and a green triangle design.

 

See TMEP §807.07(b).

 

Identification and Classification of Services

 

Applicant’s services are identified as:

 

Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software

 

Applicant did not designate in the application the required international class number(s) for applicant’s services.  Thus, the USPTO conducted a preliminary review of the specified services and assigned an international class number.  See TMEP §1401.03(b).  However, in this case, the USPTO incorrectly classified the services in International Class 35; the correct international class number is International Class 42.  Therefore, applicant may respond by requesting that the USPTO amend the application to classify the services in International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “Scientific and technological services and research and design relating thereto” in the identification of services is indefinite and must be clarified to limit the scientific and technological services to research and design in a specific computer-related field, such as computer networking hardware or computer datacenter architecture, if accurate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “industrial analysis, industrial research” in the identification of services is indefinite and must be clarified to specify the fields of these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant may specify the industrial analysis is of fluids and the industrial research is of products, if accurate.

 

The wording “authentication services” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, these services could include user authentication using specific technological methods, such as using single sign-on technology for e-commerce transactions.  These services could also include authentication of such goods as jewelry and works of art.  Therefore the applicant must specify these services by common commercial name.

 

To summarize, applicant may adopt any or all of the following identifications of services, if accurate:

 

Scientific and technological services, namely, research and design in the field of computer networking hardware and computer datacenter architecture; industrial fluid analysis, industrial product research and industrial design services; quality control services; providing user authentication services using single sign-on technology for e-commerce transactions; authentication of jewelry and works of art; design and development of computer hardware and software, in Class 42.

 

See TMEP §1402.01.

 

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’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Signed and Verified Application

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a)-(b)(1), (c), 2.34(a)(1)(i); TMEP §804.02. 

 

The following statements must be verified:  That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a). 

 

For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.

 

A verified statement, which includes statements supported by a signed declaration under 37 C.F.R. §2.20, must be signed by the applicant or a person “properly authorized to verify facts” and sign on behalf of the applicant.  37 C.F.R. §2.193(e)(1); TMEP §804.04; see 37 C.F.R. §2.33(a).  The following persons are properly authorized:  (1) a person with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporate applicant or a general partner of a partnership applicant); (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of applicant; and (3) an attorney who is authorized to represent the applicant and to practice before the USPTO.  37 C.F.R. §2.193(e)(1); TMEP §804.04. 

 

Information Requirement

 

To permit proper examination of the application, applicant must respond to the following question:

 

Will the applicant’s design and development of computer hardware and software be limited to any particular fields and/or functions?  If so, specify those fields or functions. 

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; TMEP §710.01(b). 

 

 

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

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@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.  Because the applicant has a foreign domicile, the response must be signed by the applicant’s U.S. 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 27, 2020 for

U.S. Trademark Application Serial No. 88817547

 

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. 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@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 May 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.”