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:  November 10, 2020

 

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 OF USPTO DATABASE OF MARKS

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

 

SUMMARY OF ISSUES:

 

• Identification/classification of goods/services
• Significance inquiry

 

IDENTIFICATION OF GOODS/SERVICES

The identification of goods/services is indefinite and must be clarified because the nature of the goods/services cannot be ascertained and accurately classified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must specify the type of Class 9 components as indicated below.  Please note that events and conferences must be further specified and correctly classified as business events and conferences are in Class 35, while those services for educational or entertainment purposes are in Class 41.

 

The applicant must clarify the wording in Class 42: “providing…a web site featuring a wide variety of educational topics and subjects for network-based delivery of content to global computing, mobile electronic and optical devices.”  If applicant is providing information via the Internet, such as on a website, the subject matter of the information being provided determines classification of these services.  See TMEP §1402.11(a)(ii).  Therefore, applicant must amend the identification to specify the subject matter of the information being provided via the Internet and the proper classification.  See id. 

 

See suggested language and instructions below.

 

Applicant may adopt the following identification, if accurate:  

 

“{indicate type of hubs, e.g. communication, printer, computer network} hubs; modems; computer network switches; Ethernet repeaters; repeaters for radio and television stations; wireless network repeaters; {indicate type of router, e.g. network, wireless, telephone call, computer network} routers; {indicate type of switches, e.g. power, differential, computer, Ethernet, telecommunication} switches; wireless access point devices; embedded and standalone computer network interface devices; computer hardware; computer network interface cards; computer network adapters; computer servers; communications servers; computer hardware for network and computer security functionality, namely, for firewalls, data encryption, and interoperability with network security protocols; downloadable cloud-computing software for deploying virtual machines to a cloud computing platform and for managing virtual machines on a cloud computing platform; downloadable software for administration of computer networks, network automation, network optimization, network management, network configuration, and deployment of software applications over networks; downloadable software for use in data centers for administration of computer networks, network automation, network optimization, network management, network configuration, and deployment of software applications over networks; downloadable podcasts in the fields of cybersecurity, information security and risk assessment.”

                        International Class 9.

 

“Organizing business events and business conferences in the fields of networking, computing systems, cybersecurity, information security, and risk assessment.”

                        International Class 35.

 

“Continuing education services, namely, providing live and on-line continuing professional education seminars in the fields of networking, computing systems, cybersecurity, risk assessment, and information security; providing online non-downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., books, magazines, brochures, etc.} in the fields of networking, computing systems, cybersecurity, risk assessment, information security; Educational services, namely, organizing events and conferences in the fields of networking, computing systems, cybersecurity, information security, and risk assessment; online journals, namely, blogs in the fields of networking, computing systems, cybersecurity, information security and risk assessment; entertainment services, namely, providing online non-downloadable audio material, video material, and podcasts in the fields of networking, computing systems, cybersecurity, information security and risk assessment.”

                        International Class 41.

 

“Application service provider, namely, hosting, managing, developing and maintaining applications, software and websites of others featuring a wide variety of educational topics and subjects for network-based delivery of content to global computing, mobile electronic and optical devices; consulting services in the field of infrastructure as a service (IAAS); infrastructure as a service (IAAS) services, namely, hosting computer software platforms for {specify the function of the software, e.g., operating virtual servers, etc.} in the field of cybersecurity for use by others; infrastructure as a service (IAAS) services, namely, hosting computer software platforms for monitoring networks, computer systems and security, for use by others; infrastructure as a service (IAAS) services, namely, hosting computer software platforms for network, computer systems and security management for use by others; consulting services in the field of platform as a service (PAAS); platform as a service (PAAS) featuring computer software platforms for {specify the function of the software, e.g., operating virtual servers, etc.} in the field of cybersecurity; platform as a service (PAAS) featuring computer software platforms for monitoring network computer systems and security; platform as a service (PAAS) featuring computer software platforms for network, computer systems and security management; software as a service (SAAS) services featuring software for specify the function of the software, e.g., operating virtual servers, etc.} in the field of cybersecurity; consulting services in the field of software as a service (SAAS); software as a service (SAAS) services featuring software for monitoring network computer systems and security; software as a service (SAAS) services featuring software for network, computer systems and security management; technology consultation in the fields of networks, computer systems and cybersecurity; cybersecurity services in the nature of restricting unauthorized access to computer systems; computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; computer security threat analysis for protecting data; testing, analysis, and evaluation of the software of others to assure compliance with information; development of customized software for others for use in risk assessment and information security; maintenance of computer software relating to computer security and prevention of computer risks; updating of computer software relating to computer security and prevention of computer risks; customer support services, namely, troubleshooting of computer software problems in the fields of computer, data, application, and network security; technical support services, namely, providing backup computer programs and facilities in the fields of computer, data, application, and network security; technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts in the fields of computer, data, application, and network security; technical support services, namely, monitoring technological functions of computer network systems in the fields of computer, data, application, and network security.” 

                        International Class 42.

 

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.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

The application identifies goods and/or 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 classes.  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.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

To permit proper examination of the application, applicant must explain whether the wording “AMYNA” in the mark has any significance in the applicant’s trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

PLEASE NOTE:  Applicant is encouraged to telephone or email (Tracy.Cross@uspto.gov) the trademark examining attorney to resolve the issues raised above, if a new class is not being added.  Formal responses are not accepted via email.  However, in this case, the examining attorney will issue an examiner’s amendment based upon the applicant’s informal email communication.

 

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.    

 

 

/Tracy Cross/

Examining Attorney

Law Office 109

(571) 272-9271

Tracy.Cross@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 November 10, 2020 for

U.S. Trademark Application Serial No. 90067385

 

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. 

 

 

/Tracy Cross/

Examining Attorney

Law Office 109

(571) 272-9271

Tracy.Cross@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 November 10, 2020, 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.”