Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  February 08, 2022

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not include an acceptable amendment to the identification of services.  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Identification of Services

 

Particular wording in the amended identification of services is unacceptable as explained below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Downloadable electronic publications in the nature of electronic test certificates for certifying that the architecture of computer hardware and software systems comply with a specific set of hardware and firmware standards for operational purposes – Class 9; [ACCEPTABLE]

 

Testing, analyzing, and evaluating specific instruction set architecture implementations of computer hardware and computer software to determine conformity with certification standards; [UNACCEPTABLE]

 

The original identification of services in the application as it was filed included the following services:

certification services; development of voluntary standards, and compliance services.

 

Applicant has identified “testing, analyzing and evaluating” services in its most recent amendment to the identification of services.   These services are not acceptable because they exceed the scope of the original identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.

 

development of voluntary standards for the security of computer instruction set architectures, computer hardware and computer software for compliant computer systems – Class 42; [ACCEPTABLE]

 

Regulatory compliance consulting services relating to certifying that the architecture of computer hardware and software systems comply with a specific set of hardware and firmware standards for operational purposes – Class 45. [UNACCEPTABLE]

 

The wording “relating to certifying” expands the scope of the original identification of services which restricted the compliance to “relating to specific instruction set architecture implementations of computer hardware and computer software.”  Consequently, applicant has expanded the scope of such services.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.

 

Applicant may adopt the following for the unacceptable segment immediately above, if accurate:

 

“Regulatory compliance consulting services relating to specific instruction set architecture implementations of computer hardware and computer software for complaint computer systems.”

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Accordingly, the following requirement made final in the Office action dated July 20, 2021, is maintained and continued: 

 

            •  Acceptable Amendment to the Identification of Services

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

The Trademark Trial and Appeal Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

 

 

/Christopher Buongiorno/

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

christopher.buongiorno@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 08, 2022 for

U.S. Trademark Application Serial No. 90151302

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.