UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 1/4/2019

 

 

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.

 

SEARCH FOR CONFLICTING MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Applicant must respond to the following requirements.

 

IDENTIFICATION OF GOODS/SERVICES

 

GENERAL GUIDELINES

 

In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a).  If applicant uses indefinite words and phrases such as "services in connection with," "such as," "including," "and like services,"  "concepts," or "not limited to," such wording must be followed by "namely," and a list of the specific services identified by their common commercial or generic names.  See id.

 

Applicant may amend the identification to list only those items that are within the scope of the goods/services set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

Unacceptable identification

 

PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold.  If the recommended changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information into the amended description. 

 

Class 009

 

Identification acceptable as filed.

 

Class 038

 

Applicant filed the following identification:

 

“Telecommunication services; telecommunication services, namely, electronic transmission of data and network credentials; telecommunication services, namely, establishing and granting connections to computer networks or cloud environments; providing access to telecommunications networks especially through secured telecommunication networks by means of online authentication and verification of network credentials; providing secure and authenticated access to computer networks; communications services; electronic transmission of information and data; telecommunications services, namely, transmission of text, images, audio, and video, and data via telecommunications networks, wireless communications networks, and the internet; providing access to databases; telecommunication services for providing multiple-user access to a global computer network; delivery of messages by electronic transmission”

 

Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear.  See TMEP §§1402.01, 1402.03.  Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.

 

Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.

 

The following substitute identification with amended wording is suggested, if appropriate:

 

“Telecommunication services, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; telecommunication services, namely, electronic transmission of data and network credentials; telecommunication services, namely, establishing and granting connections to computer networks or cloud environments; providing access to telecommunications networks especially through secured telecommunication networks by means of online authentication and verification of network credentials; providing secure and authenticated access to computer networks; communications services, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; electronic transmission of information and data; telecommunications services, namely, transmission of text, images, audio, and video, and data via telecommunications networks, wireless communications networks, and the internet; providing access to databases; telecommunication services for providing multiple-user access to a global computer network; delivery of messages by electronic transmission” in Class 038

 

Note:

 

1.     Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names.  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Class 042

 

Applicant filed the following identification:

 

“Non-downloadable computer software for use in facilitating the integration and activation of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; software as a service (SaaS) for use in facilitating the integration and activation of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; platform as a services (PaaS) for use in facilitating the integration and activation of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; non-downloadable computer software for electronic device integration and activation, internet of things (IOT) integration and activation, computer systems integration and activation, application integration and activation, network device integration and activation, network integration and activation, data integration and activation, and electronics systems integration and activation; software as a service (SaaS) for electronic device integration and activation, internet of things (IOT) integration and activation, computer systems integration and activation, application integration and activation, network device integration and activation, network integration and activation, data integration and activation, and electronics systems integration and activation; platform as a service (PaaS) for electronic device integration and activation, internet of things (IOT) integration and activation, computer systems integration and activation, application integration and activation, network device integration and activation, network integration and activation, data integration and activation, and electronics systems integration and activation; non-downloadable computer software for home automation and home device integration and activation; software as a service (SaaS) for home automation and home device integration and activation; platform as a service (PaaS) for home automation and home device integration and activation; non-downloadable computer software for others to use for the development of software to integrate, manage, connect, activate, and operate electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; software as a service (SaaS) featuring computer software for others to use for the development of software to integrate, manage, connect, activate, and operate electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; platform as a service (PaaS) featuring computer software for others to use for the development of software to integrate, manage, connect, activate, and operate electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; non-downloadable computer software for network credential storage, verification, and transmission; software as a service (SaaS) for network credential storage, verification, and transmission; platform as a service (PaaS) for network credential storage, verification, and transmission; non-downloadable computer software for transmitting network credentials from one electronic device, internet of things (IOT) device, or network to another; software as a service (SaaS) for transmitting network credentials from one electronic device, internet of things (IOT) device, or network to another; platform as a service (PaaS) for transmitting network credentials from one electronic device, internet of things (IOT) device, or network to another; non-downloadable computer software for managing, storing, sharing, and transmitting user access, roles, rights, permissions in a cloud computing environment; software as a service (SaaS) for managing, storing, sharing, and transmitting user access, roles, rights, permissions in a cloud computing environment; platform as a service (PaaS) for managing, storing, sharing, and transmitting user access, roles, rights, permissions in a cloud computing environment; computer security services, namely, enforcing, restricting, controlling, and granting access privileges of users for cloud, mobile or network connectivity based on assigned credentials; secure hosted management, storage and administration of passwords, credentials and identity information relating to persons, accounts and devices for security purposes; maintenance and updating of computer software in the field of cyber and computer security; maintenance and updating of computer software in the field of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems integration and activation; data, internet and computer security consultancy services”

 

Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear.  See TMEP §§1402.01, 1402.03.  Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.

 

Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.

 

The following substitute identification with amended wording is suggested, if appropriate:

 

“Providing on-line non-downloadable computer software for use in facilitating the integration and activation of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; software as a service (SaaS) for use in facilitating the integration and activation of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; platform as a services (PaaS) for use in facilitating the integration and activation of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; Providing on-line non-downloadable computer software for electronic device integration and activation, internet of things (IOT) integration and activation, computer systems integration and activation, application integration and activation, network device integration and activation, network integration and activation, data integration and activation, and electronics systems integration and activation; software as a service (SaaS) for electronic device integration and activation, internet of things (IOT) integration and activation, computer systems integration and activation, application integration and activation, network device integration and activation, network integration and activation, data integration and activation, and electronics systems integration and activation; platform as a service (PaaS) for electronic device integration and activation, internet of things (IOT) integration and activation, computer systems integration and activation, application integration and activation, network device integration and activation, network integration and activation, data integration and activation, and electronics systems integration and activation; Providing on-line non-downloadable computer software for home automation and home device integration and activation; software as a service (SaaS) for home automation and home device integration and activation; platform as a service (PaaS) for home automation and home device integration and activation; Providing on-line non-downloadable computer software for others to use for the development of software to integrate, manage, connect, activate, and operate electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; software as a service (SaaS) featuring computer software for others to use for the development of software to integrate, manage, connect, activate, and operate electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; platform as a service (PaaS) featuring computer software for others to use for the development of software to integrate, manage, connect, activate, and operate electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems; Providing on-line non-downloadable computer software for network credential storage, verification, and transmission; software as a service (SaaS) for network credential storage, verification, and transmission; platform as a service (PaaS) for network credential storage, verification, and transmission; Providing on-line non-downloadable computer software for transmitting network credentials from one electronic device, internet of things (IOT) device, or network to another; software as a service (SaaS) for transmitting network credentials from one electronic device, internet of things (IOT) device, or network to another; platform as a service (PaaS) for transmitting network credentials from one electronic device, internet of things (IOT) device, or network to another; Providing on-line non-downloadable computer software for managing, storing, sharing, and transmitting user access, roles, rights, permissions in a cloud computing environment; software as a service (SaaS) for managing, storing, sharing, and transmitting user access, roles, rights, permissions in a cloud computing environment; platform as a service (PaaS) for managing, storing, sharing, and transmitting user access, roles, rights, permissions in a cloud computing environment; computer security services, namely, enforcing, restricting, controlling, and granting access privileges of users for cloud, mobile or network connectivity based on assigned credentials; Internet-based application service provider, namely, secure hosted management, storage and administration of passwords, credentials and identity information relating to persons, accounts and devices for security purposes; maintenance and updating of computer software in the field of cyber and computer security; maintenance and updating of computer software in the field of electronic devices, internet of things (IOT) devices, computer systems, applications, network devices, networks, data, and electronics systems integration and activation; data, internet and computer security consultancy services ” in Class 042

 

Note:

 

2.     Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names.  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

RESPONSE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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.  

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Attorney

Law Office 103

571-272-2651

paul.moreno@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/4/2019 FOR U.S. APPLICATION SERIAL NO. 88125703

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/4/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.