Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  June 04, 2020

 

 

USPTO database searched; no conflicting marks found.  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.

 

Applicant must address issues shown below.  On June 2, 2020, the examining attorney and Mr. Charles Weigell discussed the issues below by email.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES:

 

• Amended Identification of Goods and Services Required
• Foreign Registration Certificate Required

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

The identification for “computer programs and software (recorded or downloadable)” in International Class 9 is indefinite and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 

 

The identification for “application service provider (ASP) featuring software in the fields of staffing management, management, administration, tracking, monitoring, automation, and assessment of staffing, hiring, recruiting and employee-retention processes, workforce and logistics management and planning, and decision support” in International Class 42 is indefinite and must be clarified to specify (1) the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).

 

The identification for “computer software platforms; application software” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable.  See id.  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

The identification for “computer software for use in human resources management; computer software for robotic process automation… computer software and mobile application software for accessing and connecting to online services for searching, for tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, and for synchronizing job recruiting data with email and calendaring software” 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).

 

The wording “Brochures, manuals, periodicals, magazines; printed matter, printed columns and articles…catalogues; flyers, pamphlets, booklets, reports” in the identification of goods is indefinite and must be clarified to indicate the literary subject matter of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).  For example, “magazines in the field of medicine,” “newsletters about television programs,” and “books and pamphlets in the field of financial classification of companies and securities,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

Applicant must clarify the wording “hoardings…cards…paper and paper articles”; stationery and all office requisites (other than furniture); graphics reproduction” in Class 16, and “recruitment services…information services relating to jobs and career opportunities…compilation of data” in Class 35 of goods and/or services because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods and/or services are.

 

Applicant may adopt the following wording, if accurate:

 

CLASS 9: Recorded and downloadable computer programs and computer software for {insert function of the programs and software}; Recorded and downloadable computer software platforms for {indicate function}; Recorded and downloadable application software for mobile phones and computer platforms for {indicate the function of the software}; Downloadable and recorded computer software for use in human resources management; Downloadable and recorded computer software for robotic process automation; Downloadable audio files, multimedia files, text files, e-mails, written documents, audio material, video material and games featuring information in the form of downloadable short educational and training communications in the field of human resource development for the promotion of employee retention, career growth and increased productivity for employees and employers; Downloadable and recorded computer software and mobile application software for accessing and connecting to online services for searching, for tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, and for synchronizing job recruiting data with email and calendaring software

 

CLASS 16: Brochures, manuals, periodicals, and magazines in the field of {specify field}; Printed matter, namely, printed columns and articles on the subject of {specify subject matter}; Printed advertisement, namely, advertising posters, advertising signs of paper and cardboard, and pamphlets; Printed publicity literature, namely, newsletters in the field of {specify field} ; Catalogues in the field of {indicate specific field of use}; Flyers, pamphlets, booklets, and reports in the field of {specify field}; Hoardings, namely, {clarify what a hoarding}; Printed advertisement boards of paper; Printed advertisement boards of paper of cardboard; Cards, namely, blank cards, Christmas cards, trivia cards, filing cards, note cards; Letter heads, namely, letterhead paper; Calendars and diaries; Paper;  Paper articles, namely, figures made of paper, coasters made of paper, and works of art made of paper

 

CLASS 35: Business organization and management consulting services; Providing an on-line searchable database featuring employment opportunities; Human resources management and Personnel recruitment services; Providing online databases featuring information relating to employers and employees and places of employment; Providing on-line employment information in the field of recruitment, careers, job resources and listings; Information services relating to jobs and career opportunities, namely, providing an on-line searchable database featuring employment opportunities; Providing an on-line searchable database featuring business information and business contacts; Computer data processing;  Compilation of business data

 

CLASS 42: Computer programming and computer software design; Development of computer platforms; Software as a service (SAAS) services featuring software for employment recruiting, namely, for searching for, tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, and for synchronizing job recruiting data with email and calendaring software; Application service provider (ASP) featuring software for tracking, monitoring, automation, and assessment of staffing, hiring, recruiting and employee-retention processes, workforce and logistics management and planning, and decision support for use in the fields of staffing management, management, and administration; Computer software consulting; Installation of computer software; Providing temporary use of non-downloadable web-based software used to manage human resource functions and featuring on-line management of resumes, email, job tasks, calendars, job orders, personnel placement and timecards; computer software design, development and customization for others; Installation, maintenance and updating of computer software; Technical support services, namely, troubleshooting of computer software problems

 

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 in the application 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).

 

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.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

 

 

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

 

 

 

/Louis Kolodner/

Examining Attorney

Law Office 122

(571) 272-7562

Louis.Kolodner@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 June 04, 2020 for

U.S. Trademark Application Serial No. 88821165

 

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. 

 

 

 

/Louis Kolodner/

Examining Attorney

Law Office 122

(571) 272-7562

Louis.Kolodner@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 June 04, 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.”