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: May 28, 2020
SUMMARY OF
ISSUES:
- Identification of Goods and Services for Class 9
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.
Please call or email the assigned trademark examining attorney with questions about this Office
action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or
requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
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.
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite and must be clarified because it fails to specify
the downloadable nature of the Class 9 software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
- Class 9-DOWNLOADABLE Computer application software for mobile phones, computers, handheld computers and other portable computing devices, namely, software for enabling
users to order and arrange for the delivery of alcoholic beverages, non-alcoholic beverages and food; Downloadable software for accessing and providing restaurant and food ordering and delivery
services
- Class 35-On-line ordering services in the field of restaurant take-out and delivery; on-line ordering services for delivery of alcoholic beverages and non-alcoholic
beverages
- Class 39- Delivery services, namely, the delivery of food and beverages; Delivery services, namely, the delivery of alcoholic and non-alcoholic beverages
The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C.
§1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R.
§2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory
bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).
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 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.
If applicant does not respond to this Office action within the six-month period for
response, the following goods and/or services in International Class(es) 9 will be deleted from the application: Computer application software for mobile phones,
computers, handheld computers and other portable computing devices, namely, software for enabling users to order and arrange for the delivery of alcoholic beverages, non-alcoholic beverages and
food.
The application will then proceed with the following goods and/or services in International Class(es) 9, 35 and 39 only:
- Class 9- Downloadable software for accessing and providing restaurant and food ordering and delivery services
- Class 35-On-line ordering services in the field of restaurant take-out and delivery; on-line ordering services for delivery of alcoholic beverages
and non-alcoholic beverages
- Class 39- Delivery services, namely, the delivery of food and beverages; Delivery services, namely, the delivery of alcoholic and non-alcoholic
beverages
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
How to respond. Click to file a response to this nonfinal Office action.
Scott Bibb
/ScottBibb/
Examining Attorney
Law Office 109
571-272-5669
scott.bibb@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.