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:  February 22, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

Search Results

 

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

 

However, applicant must respond to the following requirements:

 

1.         Class 9 Identification and Classification of Goods and/or Services

 

a.         The wording “software for controlling networked internet of things (IOT) devices” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).  Applicant may adopt the following wording in International Class 9, if accurate:  {indicate “recorded” or “downloadable”} software for controlling networked internet of things (IOT) devices.

 

b.         To permit proper examination of the application, applicant must submit additional product information about applicant’s “electronic devices, namely, devices used to create, manage, analyze and verify data transactions utilizing blockchain-based platforms and cryptocurrency; electronic devices, namely, devices used to facilitate electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information” because the nature of such goods is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

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.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, because the nature of the “electronic devices, namely, devices used to create, manage, analyze and verify data transactions utilizing blockchain-based platforms and cryptocurrency; electronic devices, namely, devices used to facilitate electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information” is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

In the Class 9 identification of goods suggested below, the wording “electronic devices, namely, devices used to create, manage, analyze and verify data transactions utilizing blockchain-based platforms and cryptocurrency; electronic devices, namely, devices used to facilitate electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information” has been deleted.  However, once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

c.         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.

 

d.         Applicant may adopt the following identification of goods in International Class 9, if accurate:  Computer hardware and {indicate “recorded” or “downloadable”} software for controlling networked internet of things (IOT) devices; Electronic devices, namely, long range transceivers; modems; mobile computing and operating platforms comprising computer hardware, data transceivers, wireless networks and gateways for collection and management of data; Computer hardware for cryptocurrency mining; Computer hardware for communicating data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks; WAN (wide area network) hardware; Wide area network (WAN) routers; Mobile hotspot devices; Wireless communication devices for voice, data or image transmission; Wireless adapters used to link computers to a telecommunications network; Long range WAN (wide area network) hardware; Long range Wide area network (WAN) routers.  See TMEP §1402.01.

 

e.         If applicant adds the “software for controlling networked internet of things (IOT) devices” to its identification of services in International Class 42, it may adopt the following wording in that class, if accurate:  providing temporary use of non-downloadable cloud-based software for controlling networked internet of things (IOT) devices.

 

f.          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 foregoing restrictions apply to all of the applicant’s classes of goods and services.

 

2.         Class 38 Identification of Services

 

a.         Applicant must clarify the identification of services by indicating the type of “data” transmitted and delivered “via long range wide area network (LORAWAN) technology-enabled devices,” e.g., digital music, satellite images, etc.  See TMEP §1402.01.

 

b.         The wording “LORAWAN” in the identification of services is a registered mark not owned by applicant.  Accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the services.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration Nos. 5597655 and 5638352. 

 

Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may simply delete this wording from the identification since the wording that precedes it, i.e., “long range wide area network,” is sufficient.

 

c.         Applicant may adopt the following identification of services in International Class 38, if accurate:  Peer-to-peer network computer services, namely, electronic transmission of data and documents among computers; Connectivity services, namely, providing telecommunication connectivity services for data transfer from device-to-device, device-to-internet, device-to-group, and internet-to-device via radio, internet, and wireless connections; Wireless electronic transmission of data via long range wide area network technology-enabled devices; Transmission and delivery of {indicate type of data, e.g., digital music, satellite images, etc.} via long range wide area network technology-enabled devices; Providing private and secure real time electronic communication over a computer network; Telecommunication services, namely, local and long distance transmission of voice, data, graphics and video by means of broadband optical or wireless networks; Providing multiple use access to the internet.  See TMEP §1402.01.

 

3.         Class 42 Identification of Services

 

The Class 42 identification of services is acceptable in its entirety.

 

Partial Abandonment for Failure to Respond to this Office Action

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Class 9 and 38 will be deleted from the application:  “Computer hardware and software for controlling networked internet of things (IOT) devices,” and “electronic devices, namely, devices used to create, manage, analyze and verify data transactions utilizing blockchain-based platforms and cryptocurrency; electronic devices, namely, devices used to facilitate electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information” in International Class 9, and “Wireless electronic transmission of data via long range wide area network (LORAWAN) technology-enabled devices; Transmission and delivery of data via long range wide area network (LORAWAN) technology-enabled devices” in International Class 38. 

 

The application will then proceed with the following goods and services in International Classes 9, 38, and 42 only: 

 

International Class 9:  Electronic devices, namely, long range transceivers; modems; mobile computing and operating platforms comprising computer hardware, data transceivers, wireless networks and gateways for collection and management of data; Computer hardware for cryptocurrency mining; Computer hardware for communicating data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks; WAN (wide area network) hardware; Wide area network (WAN) routers; Mobile hotspot devices; Wireless communication devices for voice, data or image transmission; Wireless adapters used to link computers to a telecommunications network; Long range WAN (wide area network) hardware; Long range Wide area network (WAN) routers.

 

International Class 38:  Peer-to-peer network computer services, namely, electronic transmission of data and documents among computers; Connectivity services, namely, providing telecommunication connectivity services for data transfer from device-to-device, device-to-internet, device-to-group, and internet-to-device via radio, internet, and wireless connections; Providing private and secure real time electronic communication over a computer network; Telecommunication services, namely, local and long distance transmission of voice, data, graphics and video by means of broadband optical or wireless networks; Providing multiple use access to the internet.

 

International Class 42:  Providing temporary use of on-line non-downloadable software and applications used to create, manage, analyze and verify data transactions utilizing blockchain-based platforms and cryptocurrency; electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information; Electronic storage of cryptocurrency for others; Providing temporary use of non-downloadable web-based decentralized applications (DApps) for the creation, management, analysis, and verification of data transactions utilizing blockchain-based platforms and cryptocurrency.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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

 

If applicant has any questions or needs assistance in responding to this Office action, please call or email the assigned examining attorney.

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@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 February 22, 2021 for

U.S. Trademark Application Serial No. 90222444

 

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. 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@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 February 22, 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.”