Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  July 21, 2021

 

Introduction

 

This letter responds to applicant’s communication filed on July 13, 2021, (the “Response”) in which applicant:

 

1. proposed an amended identification of services;
2. requested that the application be suspended, pending a Jamaican application;
3. failed to respond to the requirement for clarification about how applicant, domiciled in the United States, is eligible to register a mark under Section 44(e), a basis generally reserved for foreign applicants; and
4. failed to address the required disclaimer.

 

None of the above is acceptable.

 

The following requirements are now made FINAL: Disclaimer, Section 44(e) Basis Clarification and Requirements, and Acceptable Identification of Services. See 15 U.S.C. §1126(b)-(c); 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); 37 C.F.R. §2.63(b). TMEP §§1402.01, 1002.03-.05, 1213, 1213.03(a). 

 

Summary of Issues

 

1. Final Requirement: Disclaimer
2. Final Requirement: Section 44(e) Basis Clarification and Requirements
3. Final Requirement: Identification of Services

 

Final Requirement: Disclaimer

 

As stated in the prior Office action, applicant must disclaim the wording “TECHNOLOGIES” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).  This requirement is made Final.

 

The evidence from The American Heritage Dictionary attached to the prior Office action shows TECHNOLOGIES means, “Electronic or digital products and systems considered as a group.” Thus, TECHNOLOGIES merely describes the purpose or use of applicant’s services, e.g. “Software as a service (SaaS) services, namely, providing non-downloadable cloud-based software for virtualization, data storage, data analysis, providing computer network security, and monitoring the usage and performance of information technology networks.” (emphasis added).

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “TECHNOLOGIES” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Applicant did not address the requirement for a disclaimer in its Response.

 

Final Requirement: Section 44(e) Basis Clarification and Requirements

 

As stated in the prior Office action, applicant is domiciled in the United States and has asserted a Trademark Act Section 44(e) filing basis in its application.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).  However, an applicant domiciled in the United States is generally not eligible to register a mark under Section 44(e) unless the applicant (1) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (2) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin.  15 U.S.C. §1126(b)-(c); see TMEP §§1002.03-.05.  “Country of origin” refers to a country other than the United States in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the foreign country in which an applicant is domiciled.  15 U.S.C. §1126(c); TMEP §1002.04-.05.

 

If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:

 

(1)        A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq.  If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01; and

 

(2)        A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered.  See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.

 

If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.

 

Applicant’s Response

 

Applicant did not address any of these requirements but merely provided the following miscellaneous statement:

 

“Applicant advises the Examining Attorney that the foreign application, Jamaican Application No. 81544, being used as the basis for a priority claim under Section 44(d) with intent to perfect section 44(e) of the Trademark Act is still pending. Applicant requests that the U.S. application be suspended until the foreign registration has issued and submitted by Applicant.”

 

Applicant’s response does not address any of the requirements set forth above, and so its request is denied.  The examining attorney raised this issue in the prior Office action; thus, applicant’s request presents no new issue.

 

This requirement is made Final.

 

Final Requirement: Identification of Services

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The services in the application are:  “Infrastructure as a service (IaaS) services, namely, hosting servers for use by others; Cloud storage services for electronic files and electronic data; Computer services, namely, cloud hosting provider services; Computer services, namely, integration of private and public cloud computing environments; Providing virtual computer systems and virtual computer environments through cloud computing; Updating and maintaining cloud-based computer software through on-line updates, enhancements and patches; Technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Software as a service (SaaS) services, namely, providing non-downloadable cloud-based software for virtualization, data storage, data analysis, providing computer network security, and monitoring the usage and performance of information technology networks; Hosting cloud-computing based software for others; Data storage for others; Application storage and hosting for others; Technical consulting in the fields of design, installation, security, operation, maintenance and optimization of computer networks, computer storage, computer security, cloud computing, software-as-a-service, and digital transformation; Remote management of computer networks for others; Design of computer software for others” in Class 042. 

 

Applicant proposed the following identification in its Response: “Infrastructure as a service (IaaS) services, namely, hosting servers for use by others; Cloud storage services for electronic files and electronic data; Computer services, namely, cloud hosting provider services; Computer services, namely, integration of private and public cloud computing environments; Providing virtual computer systems and virtual computer environments through cloud computing; Updating and maintaining cloud-based computer software through on-line updates, enhancements and patches; Technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Software as a service (SaaS) services, namely, providing non-downloadable cloud-based software for virtualization, data storage, data analysis, providing computer network security, and monitoring the usage and performance of information technology networks; Hosting cloud-computing based software for others; Data storage for others; Application storage and hosting for others; Technological consulting in the fields of installation, security, operation, maintenance and optimization of cloud computer networks, cloud-based computer storage, cloud computing network security, cloud computing, software-as-a-service, and digital transformation; Remote management of computer networks for others; Design of computer software for others in the field of cloud computing,” in Class 042.

 

The above bolded wording in the identification of services remains in need of clarification because it does not identify the services with enough specificity.  See TMEP §§1402.01, 1402.03. 

 

If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.

 

Class 042:       Infrastructure as a service (IaaS) services, namely, hosting servers for use by others; Cloud storage services for electronic files and electronic data; Computer services, namely, cloud hosting provider services; Computer services, namely, integration of private and public cloud computing environments; Providing virtual computer systems and virtual computer environments through cloud computing; Updating and maintaining cloud-based computer software through on-line updates, enhancements and patches; Technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Software as a service (SaaS) services, namely, providing non-downloadable cloud-based software for virtualization, data storage, data analysis, providing computer network security, and monitoring the usage and performance of information technology networks; Hosting cloud-computing based software for others; Electronic data storage for others; Application storage in the nature of electronic data storage for others and hosting the web sites for others; Technological consulting in the fields of installation, security, operation, maintenance and optimization of cloud computer networks, cloud-based computer storage, cloud computing network security, cloud computing, software-as-a-service, and digital transformation; Remote management of computer networks for others; Design of computer software for others in the field of cloud computing

 

See TMEP §1402.01.

 

The requirement for an acceptable identification of services is made Final.

 

Advisories

 

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).

 

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.

 

Proper Response to a Final Action

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fees.

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 July 21, 2021 for

U.S. Trademark Application Serial No. 90266503

 

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. 

 

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 July 21, 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.”