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:  May 18, 2021

 

This Office action is in response to applicant’s April 30, 2021 communication.

 

In a November 4, 2020 Office action, the trademark examining attorney refused registration of the applied-for mark due to a Section 2(d) Likelihood of Confusion regarding four registered marks. Applicant was also alerted to a potential Section 2(d) Likelihood of Confusion refusal regarding four prior pending applications.

 

In applicant’s response, applicant provided arguments against the Section 2(d) Likelihood of Confusion refusal and provided a minor amendment to the identification of services. Upon further consideration and review, the trademark examining attorney has withdrawn the potential Section 2(d) Likelihood of Confusion refusal regarding four prior pending applications referenced in the previous Office action. See TMEP §713.02. Further, the Section 2(d) Likelihood of Confusion refusal regarding Registration No. 4411274 is withdrawn. See TMEP §713.02. While applicant’s arguments are appreciated, they were not found persuasive regarding Registration Nos. 5168185 and 3765901. Thus, the Section 2(d) Refusal regarding Registration Nos. 5168185 and 3765901 is maintained and continued, and all arguments and attachments are incorporated by reference. See TMEP §713.02. This scope of this refusal is now limited to “Computerized database and file management; data processing services” in Class 35 only. Lastly, applicant did not properly amend the identification of services, however, in the previous Office action, the trademark examining attorney inadvertently omitted an issue regarding this matter. Particular services are misclassified as well as being indefinite. The trademark examining attorney apologizes for failing to address this at an earlier date. In light of this, a new non-final Office action is being issued to address the classification issue. Should a final Office action issue, applicant’s arguments regarding the Section 2(d) Refusal will be addressed.

 

Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues:

• Section 2(d) Likelihood of Confusion Refusal—Partial Refusal
• Particular Wording in the Identification of Services is Indefinite, Broad and Misclassified
• Multiple Class Advisory

 

Section 2(d) Likelihood of Confusion—Partial Refusal

 

As articulated above, the Section 2(d) Refusal as to Registration Nos. 5168185, 3765901 is maintained and continued. See Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq, 713.02. It has been limited to the services “Computerized database and file management; data processing services.” In Class 35 only. All arguments and attachments provided in the previous Office action are incorporated by reference. Applicant’s arguments regarding these refusals will be addressed should a Final Office action issue.

 

Particular Wording in the Identification of Services is Indefinite, Broad and Misclassified

 

Applicant must clarify particular wording in the identification of services in International Class 35 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  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.

 

Additionally, particular wording appears to be misclassified and must be moved to the correct International Class. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Specifics are set forth below.

 

Specifically:

• “computer services, namely, creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others” is indefinite and misclassified. It should have been noted in the previous Office action, that this service belongs in Class 42 as it is a computer service. Further, applicant is required to expound upon the nature of their “sites”, e.g. websites.
• Additionally, and as specified in the previous Office action, “providing information via voice-controlled automated inquiries, namely, providing an online automated resources for searching, locating, and providing information in the field of public safety” is indefinite and broad. Applicant has not addressed the indefinite nature of this entry at all. Information services are classified according to subject matter of the information provided. TMEP §1402.11(b).  If applicant is providing information services in the field of “public safety”, this is a Class 45 service. If applicant’s primary service is not the provision of information, and is instead the provision of a website featuring technology that enables users to perform certain tasks that the website enables, this may be clarified and the services moved to Class 42.

 

Applicant may substitute the following wording, if accurate:

 

            Class 35: Computerized database and file management; data processing services

 

Class 42: computer services, namely, creating indexes of information, websites and other resources available on global computer networks and other electronic and communications networks for others; providing a website featuring technology that contains voice-controlled automated inquiries that enables consumers to use automated resources for searching, locating and providing information in the field of public safety

 

Class 45: providing information in the field of public safety, said information being provided via voice-controlled automated inquiries, namely, online automated resources for searching, locating, and providing said information

 

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).

 

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.

 

Multiple Class Advisory

 

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

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least three classes; however, applicant submitted fee(s) sufficient for only one class.  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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

Response to Office Action

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) 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. 

 

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

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 118

(571) 270-5984

Amanda.Rosen@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 May 18, 2021 for

U.S. Trademark Application Serial No. 90059336

 

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. 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 118

(571) 270-5984

Amanda.Rosen@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 May 18, 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.”