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 14, 2022

 

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.

 

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.

 

SUMMARY OF ISSUES:

 

• Identification of Goods & Services
• Partial Abandonment Advisory

 

 

IDENTIFICATION OF GOODS & SERIVCES

 

Some of the wording in the identification of goods and services is indefinite and must be clarified because applicant must either indicate a particular and finite set of goods and/or services, or must otherwise provide additional information about the nature of the goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, software must have a definitive – applicant’s identification is, in some areas, overly broad. Additionally, applicant has included the term “and/or” or “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a). 

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Finally, in Class 42, applicant indicates “software as a service (SaaS),” “temporary use of online non-downloadable software,” and “recorded software” all in the same entries. “Software as a service (Saas)” is classified as a type of service separate from “temporary use of online, non-downloadable software,” and is listed in the following format: “Software as a service (Saas) services featuring software for {indicate the function of the software}.” “Recorded software,” on the other hand, is a Class 9 good, and is inappropriate for Class 42. Applicant must specify what kind of Class 42 software or software as a service applicant wishes to identify, and must delete references to recorded software.

 

As to Class 9, applicant may adopt the following identification, with changes in bold, if accurate.

 

 

Class 9:           “downloadable and recorded computer software for providing computer security; downloadable and recorded computer software used to maintain security over or in computer networks, web applications and/or digital data; downloadable and recorded computer software for computer security risk and threat analysis, assessment, management, remediation, and elimination; downloadable and recorded computer anti-virus software; downloadable and recorded computer software for providing anti-virus scanning, detection, identification, security, management, remediation, and elimination of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computer systems, servers, and electronic devices; downloadable and recorded computer software for computer security risk and threat analysis, assessment, management, remediation, and elimination for protecting computer hardware, systems, servers, data, and electronic devices; downloadable and recorded computer software in the nature of cybersecurity software tools for assessing the vulnerability of computer networks and for constant cybersecurity monitoring; downloadable and recorded computer software for calculating and simulating security breaches while providing suggestions to protect cybersecurity; downloadable and recorded computer software for collecting relevant configuration details through agents continuously monitoring the entire fleet of digital assets on a real-time basis; downloadable and recorded computer software for integrating employees' awareness, including namely, employees' behavioral response patterns; downloadable and recorded computer software for providing real-time, on-demand comprehensive configuration and vulnerability assessments; downloadable and recorded computer software restricting unauthorized access to computer systems as part of information security management downloadable and recorded computer software for cybersecurity and computer security; downloadable and recorded computer software for use in preventing unauthorized access to and misuse of computer systems, identifying and detecting viruses, worms, trojans, spyware, adware, malware, and ransomware, authenticating domain-based email messages, and identifying malicious websites; downloadable and recorded computer security software, namely, software for cybersecurity monitoring and control of network activities on a computer; downloadable and recorded computer security software for assessing and quantifying digital security risks, threats, hacks, and data leakage across networks for cybersecurity; downloadable and recorded computer software, namely, software for data gathering, storage, manipulation, management and encryption, and management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; downloadable and recorded computer software for automated cybersecurity, digital forensics, cyber threat intelligence, and incident response; downloadable and recorded computer and information security software for {specify particular function of the software}; downloadable and recorded computer software for managing security strategy and resources relating to the security risk industry; downloadable and recorded computer programs for managing security strategy and resources for use in the security risk industry; downloadable and recorded predictive computer and network vulnerability management software, for {specify particular function of the software}; downloadable and recorded computer malware incident forensics software for {specify particular function of the software}; downloadable and recorded cybersecurity incident response software for {specify particular function of the software}; downloadable and recorded computer software for assessing vulnerability, preventing and addressing cybersecurity threats and attacks; downloadable and recorded computer software for monitoring of computer systems for detecting unauthorized access or data breach; downloadable and recorded computer anti-virus and anti-malware software; downloadable and recorded internet security software; downloadable and recorded computer software for detection and prevention of viruses and malware; downloadable and recorded computer software for computer, data and network security; downloadable and recorded computer security software for automatically identifying and sharing computer and network threat intelligence across computer and network security layers; downloadable and recorded computer software for comprehensive network security, intrusion prevention, event alerting, log capture, log analysis, network reporting, backup and recovery of digital and electronic data, and cybersecurity 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.  See TMEP §1402.04.

 

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class 9 (and all of Class 42) will be deleted from the application: “downloadable and recorded computer software used to maintain security over or in computer networks, web applications and/or digital data; downloadable and recorded computer software for integrating employees' awareness, including, employees' behavioral response patterns; Downloadable and recorded computer and information security software; downloadable and recorded predictive computer and network vulnerability management software; downloadable and recorded computer malware incident forensics software; downloadable and recorded cybersecurity incident response software.” The application will then proceed with the remaining goods in Class 9.  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.    

 

 

/Jason R. Nehmer/

Trademark Examining Attorney

Law Office 121

(571) 270-5303

jason.nehmer@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 14, 2022 for

U.S. Trademark Application Serial No. 90801520

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.