To: | F5 Networks, Inc. (officeactions@rosenlewis.com) |
Subject: | U.S. Trademark Application Serial No. 88347183 - PRIVILEGED USER ACCESS - N/A |
Sent: | February 26, 2020 07:02:20 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88347183
Mark: PRIVILEGED USER ACCESS
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Correspondence Address:
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Applicant: F5 Networks, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: February 26, 2020
This Office action is in response to applicant’s communication filed on January 31, 2020.
The applicant submitted a substitute specimen for the Class 9 goods. For the following reason, the substitute specimen is unacceptable.
Sections 1 and 45 Specimen Refusal
Thus, the refusal to register the applied-for mark in International Class 9 is now made FINAL because applicant failed to provide evidence of use of the mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
Applicant’s Class 9 goods are identified in the amendment to allege use as “Downloadable computer software for managing secure application access and authentication credentials for computer networks and applications communicating across networks.” Applicant describes the substitute specimen as “an instructional manual for the software and the means to obtain the instructional manual for the software.” The substitute specimen is a configuration guide for the “IrulesLX Priviledged [sic] User Access Solution.” However, nothing in the configuration guide indicates that the software being configured is “downloadable software.” From page 4 of the January 31, 2020 substitute specimen:
BIG-IP Components
The Privileged User Authentication (PUA) solution is made up of three parts on the BIG-IP.
These are included in the PUA platform licensing:
1. WebSSH2 Client Plugin
2. Ephemeral Authentication Plugin
3. Access Policy Manager (APM) policy configuration
The “plugin” software programs referenced above could just as easily refer to applicant’s Class 42 “Software as a service featuring software for managing secure application access and authentication credentials for computer networks and applications communicating across networks.” Thus, because there is not a specific reference to configuring “downloadable” computer software nor any information about how to download the software, the substitute specimen does not show the use of the mark in conjunction with any of the Class 9 goods identified in the amendment to allege use.
Specimens for downloadable software include instruction manuals or screen printouts from (1) webpages showing (a) the mark associated with the software and (b) ordering or purchasing information or information sufficient to download the software, (2) the actual program while running that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the Class 9 goods identified in the amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Refusal Applies Only to International Class 9
(1) Deleting the class to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the services that have not been refused registration, so that the mark may proceed toward registration in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for that class, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Partial Abandonment for Failure to Respond to this Final Office Action
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
Responding to a Final Office Action
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
If the applicant has any questions about this final Office action, please call the assigned examining attorney.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
571-272-9164
Barbara.Gaynor@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.