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:  September 04, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney as explained in the message left for the applicant’s attorney on August 28, 2020; no return communication was received.  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.

 

The requirement(s) apply to all of the goods and/or services listed in the application, unless otherwise stated.

 

 

 

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:

 

• Domicile address.
• Identification.

• Information.

 

 

 

DOMICILE ADDRESS

 

Applicant must provide applicant’s domicile address.  All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

 

A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box.  In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, applicant must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile.  Examination Guide 4-19, at I.A.3.

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.

 

To provide applicant’s domicile street address.  After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.  Information provided in the TEAS response form will be publicly viewable. 

 

If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address.  In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:

 

(1)       First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)        Use the radio buttons to select “Attorney” for the role of the person submitting the form;

(b)       Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)        On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)       On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

(2)       Then submit a TEAS response form to indicate the domicile address has been changed.  Open the form and

(a)        Answer “yes” to wizard question #3 and click “Continue;”

(b)       Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form. 

 

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES

The identification of goods and/or services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must identify the goods and/or services specifically to provide public notice to the average person who does not have an in-depth knowledge of the relevant field(s) and to enable the USPTO to classify the goods and/or services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).  

In an identification, an applicant must use the common commercial or generic name for the goods and/or services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP§§1402.01, 1402.03(a).  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  If applicable, open-ended terms (e.g., “including,” “such as”) must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).   

The applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided.  Id., 102 USPQ at 322.

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.

In this case, the applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services.  See generally TMEP §§1402.01, 1402.01(a).  Moreover, the applicant must remove any duplicate goods and/or services and properly classify the goods and/or services; software goods are classified in International Class 9, while software services are classified in International Class 42.  The software identified as “mobile application software for use by haulers to select and view delivery assignments, select and view delivery and earning histories, navigate delivery routes, capture delivery receipt signatures, dispatch messages, and view nearby scales for taring in or scaling out load at location” appear to be goods properly classified in International Class 9 and must be clarified as downloadable or recorded if goods.

 

The bolded wording and/or punctuation in the suggested identification below indicates a suggested addition(s) and/or amendment(s) to the applicant's current identification.   The applicant should refer to the suggested identification below for specific wording that requires clarification and/or reclassification. 

 

 

 

Applicant may adopt the following identification if accurate [changes in bold text]:

 

 

Downloadable mobile application software for use by haulers to select and view delivery assignments, select and view delivery and earning histories, navigate delivery routes, capture delivery receipt signatures, dispatch messages, and view nearby scales for taring in or scaling out load at location; downloadable computer software and mobile applications for use by customers in managing transactional accounts in the fields of raw materials and stone products; downloadable computer software and mobile applications for use by customers in reviewing, organizing, and managing purchase account balances and transactions in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in managing credit and the status of credit applications in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers as a payment gateway and for making direct payments; downloadable computer software and mobile applications for use by customers in placing orders, checking order status, requesting purchase quotes, accepting purchase quotes, managing purchase quotes, and reviewing purchase quotes statuses in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in forecasting product requirements and raw material needs for projects in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in reviewing, organizing, and manipulating analytics information in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in managing purchase records in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in monitoring and tracking of package shipments and delivery and transportation vehicles to ensure on-time delivery for business purposes; downloadable computer software and mobile applications for use by customers in managing informational security for the purchase and delivery of raw materials, and stone products; downloadable computer software and mobile applications for comparing, purchasing, coordinating delivery of, and tracking shipment of raw materials and stone products; downloadable computer software and mobile applications for matching requests for heavy material and stone deliveries with delivery services and drivers who can ship heavy materials and stone; downloadable mobile application software for use by haulers to select and view delivery assignments, select and view delivery and earning histories, navigate delivery routes, capture delivery receipt signatures, dispatch messages, and view nearby scales for taring in or scaling out load at location; downloadable computer software and mobile applications for managing and implementing digital signatures; downloadable computer software and mobile applications for managing and implementing digital signatures; downloadable computer software and mobile applications for use by customers in reviewing, controlling, organizing, and managing quality testing information in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in reviewing, controlling, organizing, and managing market intelligence information in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in obtaining product information and customer service in the fields of raw materials, and stone products; downloadable computer software and mobile applications for use by customers in managing purchase account balances and transactions in the fields of raw materials, and stone products and integration of such accounts with third-party accounting and business management software in International Class 9;

 

 

Software as a service (SAAS) featuring software for use by customers in managing transactional accounts in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in reviewing, organizing, and managing purchase account balances and transactions in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in managing credit and the status of credit applications in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers as a payment gateway and for making direct payments; software as a service (SAAS) featuring software for use by customers in placing orders, checking order status, requesting purchase quotes, accepting purchase quotes, managing purchase quotes, and reviewing purchase quotes statuses in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in forecasting product requirements and raw material needs for projects in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in reviewing, organizing, and manipulating analytics information in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in managing purchase records in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in monitoring and tracking of package shipments and delivery and transportation vehicles to ensure on-time delivery for business purposes; software as a service (SAAS) featuring software for use by customers in managing informational security for the purchase and delivery of raw materials, and stone products; software as a service (SAAS) featuring software for comparing, purchasing, coordinating delivery of, and tracking shipment of raw materials and stone products; software as a service (SAAS) featuring software for matching requests for heavy material and stone deliveries with delivery services and drivers who can ship heavy materials and stone; mobile application software for use by haulers to select and view delivery assignments, select and view delivery and earning histories, navigate delivery routes, capture delivery receipt signatures, dispatch messages, and view nearby scales for taring in or scaling out load at location; software as a service (SAAS) featuring software for managing and implementing digital signatures; Software as a service (SAAS) featuring software for managing and implementing digital signatures; software as a service (SAAS) featuring software for use by customers in reviewing, controlling, organizing, and managing quality testing information in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in reviewing, controlling, and managing market intelligence information in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in obtaining product information and customer service in the fields of raw materials, and stone products; software as a service (SAAS) featuring software for use by customers in managing purchase account balances and transactions in the fields of raw materials, and stone products and integration of such accounts with third-party accounting and business management software  in International Class 42.

 

 

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).

 

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and/or 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only two class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and/or 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

 

INFORMATION ABOUT GOODS/SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services.  See 37 C.F.R. §2.61(b); TMEP §814.  The information requested below is reasonably necessary to the examination of the application because it will provide a more in-depth understanding of the mark, goods and/or services, and/or issue(s) at hand.  TMEP §814.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

Merely stating that information about the goods and/or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

The applicant must directly and completely answer the following question(s) and/or provide the information requested:

 

 

1.  Does HI, VIZ, HI VIZ, or HI-VIZ  have any significance as applied to the goods and/or services other than trademark and/or service mark significance? 

 

 

2.  Does HI, VIZ, HI VIZ, or HI-VIZ have any significance in the relevant trade or industry other than trademark and/or service mark significance? 

 

 

3.  If available, the applicant will provide a website address at which the mark is used.  If no website is available, then the applicant will state this fact for the record.

 

 

 

QUESTIONS ABOUT THIS ACTION

 

If the applicant has technical questions about the TEAS response to Office action form, the applicant may send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail.  Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving.  You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours. 

 

 

For status inquiries or copies of documents, an applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system twenty-four (24) hours a day, seven (7) days a week.  Enter the application serial number or registration number and click on “Status” or “Documents.”  Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.  For help in resolving technical glitches, please email TSDR@uspto.gov.

 

 

For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC).  TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays.  A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.

 

 

If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.

 

 

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

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 September 04, 2020 for

U.S. Trademark Application Serial No. 88934818

 

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. 

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 September 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.”