To: | Toshiba America Business Solutions, Inc. (fbhatti@buchalter.com) |
Subject: | U.S. Trademark Application Serial No. 90124127 - ENCOMPASS - T5509-TBD |
Sent: | December 22, 2020 01:42:33 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90124127
Mark: ENCOMPASS
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Correspondence Address: BUCHALTER, A PROFESSIONAL CORPORATION 18400 VON KARMAN AVE., SUITE 800
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Applicant: Toshiba America Business Solutions, Inc.
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Reference/Docket No. T5509-TBD
Correspondence Email Address: |
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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: December 22, 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
· Identification of Services
· Multiple-Class Application Requirements
Applicant’s “non-downloadable software” entries are indefinite and must be clarified to indicate how the software is provided as a service. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Applicant must indicate the software is provided online or that the software is provided on a temporary basis. Further, applicant must make clear that its online portals are services for others. Applicant may add the wording “providing” in front of those entries.
Applicant may substitute the following wording, if accurate (changes in bold):
Class 42: Providing online non-downloadable software which allows monitoring and management of fleet of print output devices; providing an online portal which allows remote monitoring and remote management of fleet of print output devices; providing online non-downloadable software which allows fleet overview of print output devices; providing an online portal which allows the remote overview of fleet of print output devices; providing online non-downloadable software which allows monitoring,. management and reporting of service calls, supply fulfillment tracking, supply shipments, service calls, and other maintenance and functioning of print device fleets; online portal which allows the remote monitoring, management, and reporting of service calls, supply fulfillment tracking, supply shipments, service calls and other maintenance and functioning of print device fleets
Class 45: Providing an online portal which allows monitoring of fleet of print output devices for protecting personal property
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 APPLICATION REQUIREMENTS
The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
(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 two classes; however, applicant submitted a fee 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.
ASSISTANCE
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.
Michael Eisnach
/Michael Eisnach/
Examining Attorney
Law Office 104
(571) 272-2592
michael.eisnach@uspto.gov
RESPONSE GUIDANCE