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 25, 2020

 

 

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.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

REFUSALS & REQUIREMENTS

 

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.

 

SUMMARY OF ISSUES:

 

• PRIOR-FILED APPLICATION
• IDENTIFICATION
• TRANSLATION ADVISORY
• LIVING INDIVIDUAL ADVISORY

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87263664 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 application.

 

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 mark in the referenced application.  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.

 

IDENTIFICATION

 

The identification contains wording that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 9

Recorded computer software for managing proxy networks and proxy servers; downloadable software for connecting computer network users and geographically disparate computer servers; electronic database in the field of {specify subject} recorded on computer media; downloadable data processing programs; recorded and downloadable computer software tools for building web scrapers; recorded and downloadable proxy server management software; Downloadable database management software for big data collection and analysis

 

Class 42

Computer software design; conversion of computer programs and data, other than physical conversion; conversion of data or documents from physical to electronic media; data conversion of electronic information; database development services; development and creation of computer programs for data processing; electronic data back-up services; electronic storage services for archiving electronic data; providing search engines for the internet; recovery of computer data; research and development of new products for others; technological research in the field of compilation and analysis of data and statistics; Development and creation of computer programs for data processing; computer services, namely, internet protocol address management; computer services, namely, hosting proxy servers for others; providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the internet; Data mining; Technical computer system data analysis; residential proxy server hosting services; Data center proxy server hosting services; proxy management namely, remote management of the information technology (IT) systems of others; Rental of software for data processing; Development and creation of computer programs for data processing; Software as a service (SAAS) services featuring software for big data collection, big data analysis, web data extraction and database management; Providing temporary use of on-line software for developing web data extraction programs; Data automation and collection service using proprietary software to evaluate, analyze and collect service data; Computer services, namely, providing data center proxy server hosting services for others; Computer services, namely, providing proxy server hosting services for others

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or 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.

 

TRANSLATION ADVISORY

 

The translation statement is not necessary and will not be printed in the event of registration. TMEP §809.03.

 

LIVING INDIVIDUAL ADVISORY

 

Applicant’s statement regarding the name, portrait or signature of a living individual identified in the mark will not be printed on any registration that may issue from this application.  The statement is unnecessary because the mark on its face would not reasonably be perceived as the name or likeness of a specific living individual.  TMEP §§813.01(b), 1206.05.

 

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

 

 

/Samuel R. Paquin/

Trademark Examining Attorney

Law Office 101

United States Patent & Trademark Office

(571) 272-2514

spaquin@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 25, 2020 for

U.S. Trademark Application Serial No. 88853021

 

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. 

 

 

/Samuel R. Paquin/

Trademark Examining Attorney

Law Office 101

United States Patent & Trademark Office

(571) 272-2514

spaquin@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 25, 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.”