Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  April 19, 2021

 

INTRODUCTION

 

This Office action is in response to Applicant’s communication filed on March 5, 2021.

 

In a previous Office action dated October 6, 2020, Applicant was required to satisfy the following requirements: Amend the classification and identification of goods and services; Respond to a significance inquiry.

 

Based on Applicant’s response, the Trademark Examining Attorney notes that the requirements to amend the classification of goods and services and to respond to a significance inquiry are both SATISFIED.  See TMEP §§713.02, 714.04. 

 

Further, the Trademark Examining Attorney MAINTAINS and now makes FINAL the partial requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that Applicant must address:

 

·         Amended Identification of Services Required – Partial Requirement

 

Also contained herein is a Partial Abandonment Advisory.

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED –

PARTIAL REQUIREMENT

 

The wording “Providing online non-downloadable software for mapping, ground, air and sea localization, ground, air and sea navigation, location data, and location services via an interactive website” in the identification of services in Class 42 is indefinite and must be clarified because the function of the software is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording in Class 42, if accurate: 

 

Providing online non-downloadable software for mapping, ground, air and sea localization, ground, air and sea navigation, processing location data, and accessing location {further specify type of location services, e.g., GPS tracking} services via an interactive website;

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

ID Manual Online

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

PARTIAL ABANDONMENT ADVISORY

 

If Applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment: 

 

Class 42 – Providing online non-downloadable software for mapping, ground, air and sea localization, ground, air and sea navigation, location data, and location services via an interactive website

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and services only: 

 

Class 9 – Downloadable computer application software for ground, air and sea navigation, ground, air and sea localization and mapping; and downloadable mobile applications for use in mobile devices for the purpose of generating maps, ground, air and sea localization and ground, air and sea navigation

 

Class 42 –   Providing an interactive website featuring technology enabling users to provide mapping, ground, air and sea localization, and ground, air and sea navigation services for use on mobile devices via mobile applications

 

HOW TO RESPOND

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A Request for Reconsideration that fully resolves the outstanding requirement; 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).

 

Click to file a request for reconsideration of this final Office action that fully resolves the outstanding requirement and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fees.

 

ASSISTANCE

 

Please call or email the assigned Trademark Examining Attorney with questions about this Office action.  Although the Examining Attorney cannot provide legal advice, the Examining Attorney can provide additional explanation about the requirement 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. 

 

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 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 April 19, 2021 for

U.S. Trademark Application Serial No. 90021607

 

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. 

 

 

Samantha Sherman

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 April 19, 2021, 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.”