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:  June 22, 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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES:

 

• Identification of Goods and Services Amendments Required
• Mark Description Amendments Required

 

IDENTIFICATION OF GOODS AND SERVICES AMENDMENTS REQUIRED

 

Particular wording in the Identification of Goods and Services is overly broad and indefinite and must be amended. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   The specific issues are set forth below.

 

Specifically, the identification includes identifications for computer software.  However, either the format of the software or the function of the software is not sufficiently specified.

 

These identifications 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; and (2) whether its 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 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).

 

Specifically, for “Computer software platforms for communication services”, the format of the software is unclear and could encompass downloadable or recorded software in Class 9 or non-downloadable software services in Class 42.  Further the function “communication services” is unclear as this could encompass anything from sending text messages to radio broadcasts.  Therefore, applicant must also clearly specify the function of the software.

 

The wording “Downloadable computer software for mobile devices, computers, handheld computers, and tablets, namely, software for communication services” is similarly indefinite because, while this specifies the format, the function remains unclear and must be clarified.

 

The identifications “Downloadable software in the nature of a mobile application for improving and enhancing communications between users, particularly in emergency situations” and  “Downloadable software in the nature of a mobile application for improving and enhancing communication of location information between users” is indefinite because the function of “improving and enhancing communication” is unclear, e.g., allowing users to send location information with a single click, etc.

 

The wording “Downloadable software in the nature of a mobile application for providing notifications and alerts to users” and “Downloadable software for the provision of alerts and notifications between users” is indefinite and must be clarified because the nature of the “notifications and alerts” is unclear and could encompass things such as “emergency weather notifications” or “alerts for when particular items are on sale”.  Therefore, applicant must more clearly specify the function of the software.

 

Similarly in Class 42, while applicant specifies the format of the software, the function is unclear, e.g., “Application service provider featuring software for communication services”, applicant must clearly and specifically identify the type of communication, e.g., text messages, email messages, etc.

 

The identifications “Platform as a Service (PAAS) featuring computer software platforms providing multi-user communication and notifications around life safety alerts, emergency information, location information, special offers, and other information critical to users” and “Software as a Service (SAAS) featuring computer software platforms to provide multi-user communication and notifications around life safety alerts, emergency information, location information, special offers, and other information critical to users” are indefinite, as applicant must clarify the nature of the “special offers” and “other information critical to users”, such as whether these are things such as allowing users to share location information with others, or if this is an automated function, e.g., software that pushes retail sale information based on a user’s location, etc.  Therefore, this must be clarified.

 

The identifications “Platform as a Service (PAAS) for the provision of alerts and notifications between users” and “Software as a Service (SAAS) for the provision of alerts and notifications between users” are indefinite because the function of the software is unclear as the type of alerts and notifications are unclear, e.g., emergency weather alerts, notifications about events, etc.  Applicant thus must clarify the function of the software.

 

Overall Identification

 

Applicant may adopt the following Identification, if accurate (wording in bold and italics represents amendments with notes about the amendments in brackets):

 

Class 9:           [specify form in Class 9, e.g., downloadable, recorded, etc.] Computer software platforms for communication services in the nature of [clarify the function of the software, e.g., for sending text messages between users, etc.]; Downloadable computer software for mobile devices, computers, handheld computers, and tablets, namely, software for communication services in the nature of [clarify the function of the software, e.g., for sending text messages between users, etc.];; Downloadable software in the nature of a mobile application for improving and enhancing communications between users in the nature of [clarify function of the software, e.g., allowing users to send an emergency message and location information with a single click, for sending images directly to others, etc.], particularly in emergency situations; Downloadable software in the nature of a mobile application for improving and enhancing communication of location information between users in the nature of [clarify function of the software, e.g., allowing users to send an emergency message and location information with a single click, for sending images directly to others, etc.]; Downloadable software in the nature of a mobile application for providing notifications and alerts to users in the nature of [clarify function of the software, e.g., for users to send emergency messages to each other, for providing automatic safety and weather alerts based on the news, etc.]; Downloadable software for the provision of alerts and notifications between users in the nature of [clarify function of the software, e.g., for users to send emergency messages to each other, for providing automatic safety and weather alerts based on the news, etc.]

 

Class 42:         Application service provider featuring software for communication services in the nature of [clarify the function of the software, e.g., for sending text messages between users, etc.]; Platform as a Service (PAAS) featuring computer software platforms providing multi-user communication and notifications around life safety alerts, emergency information, location information, special offers, and other information critical to users in the nature of [clarify services, e.g., retail offers based on a user’s location, messages from friends, etc.]; Platform as a Service (PAAS) for the provision of alerts and notifications between users in the nature of [clarify function of the software, e.g., for users to send emergency messages to each other, for providing automatic safety and weather alerts based on the news, etc.];; Software as a Service (SAAS) featuring computer software platforms to provide multi-user communication and notifications around life safety alerts, emergency information, location information, special offers, and other information critical to users in the nature of [clarify services, e.g., retail offers based on a user’s location, messages from friends, etc.]; Software as a Service (SAAS) for the provision of alerts and notifications between users in the nature of [clarify function of the software, e.g., for users to send emergency messages to each other, for providing automatic safety and weather alerts based on the news, etc.];

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services may not later be reinserted.  See 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.

 

MARK DESCRIPTION AMENDMENTS REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  Specifically, the mark omits the sound marks in the design.

 

The following description is suggested, if accurate: 

 

The mark consists of a speech bubble with rounded corners and a “!” in the center.  On the upper right corner of the speech bubble is an alarm horn facing upward, with three marks on the outside of the horn representing sound.

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

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

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@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 June 22, 2020 for

U.S. Trademark Application Serial No. 88847127

 

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. 

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@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 22, 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.”