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:  December 23, 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.

 

SUMMARY OF ISSUES:

• Recitation of Services

 

Recitation of Services

 

The wording “platform as a service (PaaS) featuring platform-based service, namely, cloud computing service that provides a platform allowing customers to develop, run, and manage applications” in the identification of services is indefinite, overbroad and must be clarified because it does not specify if the services are computer software platforms. In addition, the words “providing service with use of computing resources, namely, servers, database management, data storage, networking and software applications over the Internet” does not specify a particular service being offered. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  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.

 

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.

 

The recitation of services should be amended to read as follows, if accurate:

 

Design and development of multimedia products; technical research in the field of telecommunications; Scientific laboratory services; Research in the field of telecommunications technology; Industrial design; Design of mobile telephones; Packaging design; Computer software design; Computer programming; Updating of computer software; Maintenance of computer software; Computer system design; Installation of computer software; Recovery of computer data; Software as a service (SaaS) as providing service of web-based software, namely, software applications for playing music, playing games, engaging in online shopping, accessing and viewing travel guides, communicating with others, processing and transmitting images and/or videos, and taking, saving and storing photographs; Software development in the framework of software publishing; Platform as a service (PAAS) featuring computer software platforms that provides a platform allowing customers to develop, run, and manage applications; Off-site data backup; Unlocking of mobile phones; Data encryption services; Developing of driver and operating system software; Software design and development; Recovery of smartphone data; Updating of smart phone software; Smartphone software design; Providing search engines for the internet; Development of computer platforms; User authentication services using technology for e-commerce transactions; User authentication services using single sign-on technology for online software applications; Design and development of software in the field of mobile applications; Installation, maintenance and repair of cell phone related software; Design of telecommunications apparatus and equipment; Design and development of virtual reality software; Electronic data storage in International Class 42.

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class 42 will be deleted from the application:  platform as a service (PaaS) featuring platform-based service, namely, cloud computing service that provides a platform allowing customers to develop, run, and manage applications; Providing service with use of computing resources, namly, servers, database management, data storage, networking and software applications over the Internet.  The application will then proceed with the following services in International Class 42 only:  Design and development of multimedia products; technical research in the field of telecommunications; Scientific laboratory services; Research in the field of telecommunications technology; Industrial design; Design of mobile telephones; Packaging design; Computer software design; Computer programming; Updating of computer software; Maintenance of computer software; Computer system design; Installation of computer software; Recovery of computer data; Software as a service (SaaS) as providing service of web-based software, namely, software applications for playing music, playing games, engaging in online shopping, accessing and viewing travel guides, communicating with others, processing and transmitting images and/or videos, and taking, saving and storing photographs; Software development in the framework of software publishing; Off-site data backup; Unlocking of mobile phones; Data encryption services; Developing of driver and operating system software; Software design and development; Recovery of smartphone data; Updating of smart phone software; Smartphone software design; Providing search engines for the internet; Development of computer platforms; User authentication services using technology for e-commerce transactions; User authentication services using single sign-on technology for online software applications; Design and development of software in the field of mobile applications; Installation, maintenance and repair of cell phone related software; Design of telecommunications apparatus and equipment; Design and development of virtual reality software; Electronic data storage.”  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Search of the Office Records

 

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.

 

Response

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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

 

 

/Charles L. Jenkins, Jr./

Charles L. Jenkins, Jr.

Trademark Attorney

Law Office 112

571-272-9305

charles.jenkins@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 December 23, 2020 for

U.S. Trademark Application Serial No. 90128982

 

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. 

 

 

/Charles L. Jenkins, Jr./

Charles L. Jenkins, Jr.

Trademark Attorney

Law Office 112

571-272-9305

charles.jenkins@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 December 23, 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.”