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 16, 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 of the Office Records

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

Identification of Services - Particular Wording Indefinite

 

The following wording in bold in the identification of services is indefinite and must be clarified because the use of computer services is unclear.  See TMEP §1402.01. 

 

International Class 042: “Providing on-line non-downloadable computer software for cloud-based data processing, namely, data management, data integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data mapping, data warehousing, data replication, data loading, and data cleansing and ETL processing; Software as a service (SAAS) services featuring software for data processing, namely, data management, data integration, cloud integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data loading, data cleansing and ETL processing; Platform as a service (PAAS) services featuring cloud computing software platforms for data processing, namely, data management, data integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data loading, data quality, data cleansing and ETL processing; Providing computer software services for cloud automation and application integration; Providing computer software services for accessing and integrating data and work flows, creating multi-step workflows among applications, providing for data security and confidential actions, and for handling complex logic across multiple applications”

 

 

Descriptions of services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

 

Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may change this wording to the following, if accurate.  See TMEP §1402.01.

 

International Class 042: “Providing on-line non-downloadable computer software for cloud-based data processing, namely, data management, data integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data mapping, data warehousing, data replication, data loading, and data cleansing and ETL processing; Software as a service (SAAS) services featuring software for data processing, namely, data management, data integration, cloud integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data loading, data cleansing and ETL processing; Platform as a service (PAAS) services featuring cloud computing software platforms for data processing, namely, data management, data integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data loading, data quality, data cleansing and ETL processing; Platform as a service (PAAS) featuring computer software platforms for cloud automation and application integration; Platform as a service (PAAS) featuring computer software platforms for accessing and integrating data and data work flows, creating multi-step data workflows among applications, providing for data security and confidential user actions, and for handling complex logic data sharing across multiple applications”

 

Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04. 

 

Partial Abandonment and Applicant’s Response

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, the following goods/services will be deleted from the application: 

 

International Class 042: Providing computer software services for cloud automation and application integration; Providing computer software services for accessing and integrating data and work flows, creating multi-step workflows among applications, providing for data security and confidential actions, and for handling complex logic across multiple applications”

 

 

 

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

 

The application will then proceed with the following goods/services only: 

 

International Class 042: “Providing on-line non-downloadable computer software for cloud-based data processing, namely, data management, data integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data mapping, data warehousing, data replication, data loading, and data cleansing and ETL processing; Software as a service (SAAS) services featuring software for data processing, namely, data management, data integration, cloud integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data loading, data cleansing and ETL processing; Platform as a service (PAAS) services featuring cloud computing software platforms for data processing, namely, data management, data integration, data consolidation, data synchronization, data curation, data preparation, data governance, data transformation, data extraction, data migration, data loading, data quality, data cleansing and ETL processing

 

See TMEP §718.02(a).

 

In such case, applicant’s only option would be to file a timely petition to revive the abandoned goods/services, which, if granted, would allow for the reinsertion of these goods/services into the application.  See 37 C.F.R. §2.66; TMEP §§718.02(a), 1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

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

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 16, 2020 for

U.S. Trademark Application Serial No. 88818748

 

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. 

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 16, 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.”