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: January 30, 2022
SUMMARY OF ISSUES:
- Request for Information
- Significance of Letters
- Amended Identification of Services
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.
Please call or email the assigned trademark examining attorney with questions
about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s)
and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and
pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
INFORMATION ABOUT SERVICES REQUIRED
To permit proper examination of the application, applicant must submit additional information
about applicant’s services. See 37 C.F.R. §2.61(b); TMEP §814. The requested information should include fact
sheets, brochures, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining
how its own services will differ. If the services feature new technology and no information regarding competing services is available, applicant must provide a
detailed factual description of the services.
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their
prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
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 services is available on applicant’s website is an
insufficient response and will not make the relevant information of record. See In re Planalytics, 70 USPQ2d 1453, 1457-58 (TTAB
2004).
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must explain whether
the letters “GEO” in the mark have any significance in the geo location or mapping or location trade or industry or as applied to applicant’s goods and/or services, or if such letters represent a
“term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. 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.
IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified
because the nature of the applicant’s PAAS. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
- Class 42- Platform as a service (PAAS) featuring COMPUTER SOFTWARE PLATFORMS FOR remote customer assistance,
training, and communication via audio and video; Platform as a service (PAAS) featuring COMPUTER SOFTWARE PLATFORMS FOR remote customer assistance, training, and communication services via audio and
video in the fields of installation, repair, maintenance, troubleshooting, application engineering, escalations and upgrades of tools and software; Platform as a service (PAAS) featuring computer
software platforms for software startup, documentation, and customer engagement agreements; Platform as a service (PAAS) featuring COMPUTER SOFTWARE PLATFORMS FOR data transfer, access, transmission,
handling, analysis and storage; Providing temporary use of non-downloadable computer software for remote customer assistance, training, and communication services via audio and video; Providing
temporary use of non-downloadable computer software for remote customer assistance, training, and communication services via audio and video in the fields of installation, repair, maintenance,
troubleshooting, application engineering, escalations and upgrades of tools and software; Providing temporary use of non-downloadable computer software for software startup, documentation, and
customer engagement agreements; Providing temporary use of non-downloadable computer software for enabling data transfer, transmission, handling, access, analysis and storage
The Trademark Act requires that a trademark or service mark application must
include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include
a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications
filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01,
1402.01(b)-(c).
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/or services in trademark applications, please see the online searchable Manual of
Acceptable Identifications of Goods and Services 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.
Scott Bibb
/ScottBibb/
Examining Attorney
Law Office 109
571-272-5669
scott.bibb@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.