To: | ADP, Inc. (ipdocketingsf@venable.com) |
Subject: | U.S. Trademark Application Serial No. 90360640 - ROLL - 027319398136 |
Sent: | May 12, 2021 07:48:36 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90360640
Mark: ROLL
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Correspondence Address: SHARONI S. FINKELSTEIN AND ANDREW D. PRI 101 CALIFORNIA STREET, SUITE 3800
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Applicant: ADP, Inc.
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Reference/Docket No. 027319398136
Correspondence Email Address: |
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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 12, 2021
SEARCH OF USPTO DATABASE OF MARKS
The examining attorney respectfully advises applicant that this Office Action contains the following requirement(s) summarized immediately below and further explained within the body of this Office Action.
SUMMARY OF ISSUES that applicant must address:
The identification of goods is indefinite and must be clarified because it lacks specificity. 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.
Applicant may adopt the following wording, if accurate:
Downloadable computer application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for employee and personnel related services, namely, payroll processing, preparation, and administration, payroll tax calculation, electronic payroll, pre-employment background screening, time, attendance, scheduling, employee recordkeeping, and compensation management; Downloadable computer application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for use in database management in the fields of employee records and human capital management (HCM), time, attendance, scheduling, payroll and tax compliance, compensation management, learning and development, and succession planning; Downloadable computer application software{specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for instant messaging software and communications software for use in payroll processing, preparation, and administration, payroll tax calculation, electronic payroll, pre-employment background screening, time, attendance, scheduling, employee recordkeeping, and compensation management
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
How to respond. Click to file a response to this nonfinal Office action.
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.
/Ronald E. DelGizzi/
Trademark Examining Attorney
Law Office 107
Phone - (571) 272-2754
ronald.delgizzi@uspto.gov
RESPONSE GUIDANCE