To: | Duke University (trademarks@parkerpoe.com) |
Subject: | U.S. Trademark Application Serial No. 88838367 - MUSER - 29836-00027 |
Sent: | June 15, 2020 12:23:20 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88838367
Mark: MUSER
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Correspondence Address: PARKER POE ADAMS & BERNSTEIN LLP 301 FAYETTEVILLE STREET, SUITE 1400
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Applicant: Duke University
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Reference/Docket No. 29836-00027
Correspondence Email Address: |
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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 15, 2020
SEARCH OF USPTO DATABASE OF MARKS
IDENTIFICATION OF GOODS & SERVICES
Applicant has applied for MUSER for “On-line computer software platform that allows researchers to post, and students to apply for, research projects; computer software for reviewing applications that includes blind application review and automated sending of customized emails to stakeholders; computer software for promoting research opportunities through a customizable platform; research and development of computer software” in International Class 42.
The identification for software in International Class 42 is indefinite and too broad and must be clarified because the wording does not make clear the 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). 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 following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the
identification of goods/services. The curly brackets, e.g. { }, contain instructions to be followed and/or suggested wording. Brackets (or instructions) should not be a part
of the amended, final ID. If there is wording in applicant’s version of the identification of goods/services that should be removed, it will be shown with a line through it such as this:
strikethrough. Applicant should enter its amendments in standard font.
Applicant may substitute the following wording, if accurate:
Class 9: “On-line computer software platform, downloadable, that allows researchers to post, and students to apply for, research projects; downloadable computer software for reviewing applications that includes blind application review and automated sending of customized emails to stakeholders; downloadable computer software for promoting research opportunities through a customizable platform”
Class 42: “Platform as a service (PAAS) featuring on-line computer software platform that for allowsing researchers to post, and students to apply for, research projects; providing temporary use of non-downloadable computer
software for reviewing applications, that includes blind application review, and automated sending of customized emails to stakeholders; providing temporary use of non-downloadable computer software for promoting research opportunities through a customizable platform; research and development of computer software”
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.
MULTI-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 42; and applicant needs a specimen for class(es) 9. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
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).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) 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
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.
/Katie Foss/
Examining Attorney
Law Office 125
571-272-4067
katherine.foss@uspto.gov
RESPONSE GUIDANCE