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:  May 14, 2021

 

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 RESULTS PRIOR PENDING APPLICATION

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark. 

 

The  filing date of pending U.S. Application Serial No. 90132899 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified as set out below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Therefore all references to software in the goods and services must reference either “downloadable” and/or “recorded” for class 9 goods, or “Non-downloadable” for services. See TMEP §1402.03(d).

 

“DOWNLOADABLE Collaboration software platforms FOR USE IN (clarify area of use);DOWNLOADABLE  Interactive software FOR (specify function and field of use); DOWNLOADABLE Interactive computer software enabling exchange of information (all software does this to an extent, further specify); DOWNLOADABLE Open platform software enabling online creation and publication of 3D items, applications, and digital content for access and engagement by users” in International Class 9

 

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified as set out below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

“Teleconferencing services; videoconferencing services; providing internet chatrooms; telecommunication services (specify as this is a class heading, some examples are set out below) provided via platforms and portals on the Internet and other media” in International Class 38

 

Examples:

Providing telecommunication channels for teleshopping services

Providing telecommunications connections to the internet or databases

Digital network telecommunications services

Telecommunication services, namely, call hunting

Telecommunication services in the nature of providing telephone services with various telephone features, namely, a dedicated toll-free number, voicemail, multiple mailbox extensions, telephone message notification, fax capabilities, detailed call reports, call waiting, call identification, call forwarding, and message waiting

 

 

“Platform as a service featuring software platforms for transmission of images, audio-visual content, video content and messages; Providing online non-downloadable software for use in communication (further clarify purpose); Providing temporary use of on-line non-downloadable software for the transmission of data; Software as a service FEATURING SOFTWARE FOR (specify function and field of use); Rental of server memory space; Providing virtual computer systems  AND VIRTUAL COMPUTER ENVIRONMENTS through cloud computing; Providing virtual computer environments through cloud computing; PLATFORM AS A SERVICE (PAAS) FEATURING AN Open platform enabling online creation and publication of 3D items, applications, and digital content for access and engagement by users” in International Class 42

 

 

In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. For example, “financial services” is a common commercial term, but is too indefinite, needing to be replaced with the names of individual services, such as “mutual fund investment” or “financial consulting”.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name.  See TMEP §1402.03(a). Any wording below in all CAPITALS has been added by the examiner to fix an issue. Underlined language is problematic for the reasons set out in parentheses. Any language that should be removed has been crossed through. 

 

 

 

AMENDING GOODS AND SERVICES

 

 

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.

 

 

 

 

 

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

 

 

/Linda Mickleburgh/

Linda Mickleburgh

Examining Attorney Law Office 106

571-272-9198

linda.mickleburgh@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 May 14, 2021 for

U.S. Trademark Application Serial No. 90342136

 

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. 

 

 

/Linda Mickleburgh/

Linda Mickleburgh

Examining Attorney Law Office 106

571-272-9198

linda.mickleburgh@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 May 14, 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.”