Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

NOTICE OF DIVISIONAL REQUEST COMPLETED

ISSUE/MAILING DATE: 5/2/2019

U.S. Serial Number  88117939

The request to divide application serial no. 88117939 filed on April 8, 2019 has been processed as follows:

(1)  Parent (original) application serial no. 88117939 contains all the goods under Section 1(b) in the following class(es):

16 (Printed publications, namely, reports, white papers, brochures, manuals, and written presentations in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans).

To avoid abandonment, applicant must continue to file requests for extension of time to file a statement of use (extension requests) or a statement of use within the six-month period after the issuance of the notice of allowance or before expiration of a previously granted extension period.  37 C.F.R. §§2.88(a), 2.89(a)-(b).

(2)  Child application serial no. 88975241 contains all the goods and services under Section 1(a) in the following class(es):

9 (Downloadable electronic publications, namely, reports, white papers, brochures, manuals, and written presentations in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans; computer software for use in providing business and financial analysis in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, and financial portfolio management);

35 (Accounting, payroll processing, tax consultation, and bookkeeping services; business consulting; business consulting in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans; market research; market research in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans; marketing consulting; marketing consulting in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans; marketing services; marketing services in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans; financial records management; database management; data processing services; business management services; Providing business information and news in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans);

41 (Educational services, namely, providing workshops, classes, seminars, and conferences in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans; providing online publications, namely, reports, white papers, brochures, manuals, and written presentations in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans; providing online non-downloadable webcasts, webinars, podcasts, ongoing television programs, blogs, and videos in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, financial portfolio management, retirement plans, pension plans, and employee compensation plans);

42 (Software as a service (SAAS) services, namely, providing online, non-downloadable computer software for use in providing business and financial analysis in the fields of investing, investment management, finance, financial planning, retirement planning, risk management, and financial portfolio management; installation, maintenance and updating of computer software; computer programming; software design and development; technical support services, namely, troubleshooting of computer software problems and troubleshooting of web and database software applications; computer software consulting; computer and internet security services, namely, restricting unauthorized access to computer networks and websites; computer security consultancy, and internet security consultancy; data security services, namely, data security consultancy; design and development of electronic data security systems; computer security threat analysis for protecting data; authentication, issuance and validation of digital certificates); and

45 (Licensing of computer software; online social networking services).

The child application will proceed to registration.

37 C.F.R. §2.87; see TMEP §§1110 et seq. 

Please call the undersigned with any questions.

/Tracy Welch/

Tracy Welch

Paralegal Specialist

OFC OF TM SVC

ITU/Divisional Unit

571-272-9631

571-273-9631 fx

tracy.welch@uspto.gov

NO RESPONSE TO THIS NOTICE IS REQUIRED.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Status and Document Retrieval (TSDR) at http://tsdr.gov.uspto.report/. Please keep a copy of the complete status screen.  If TSDR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.