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:  April 01, 2022

 

The applicant’s Section 44(d) priority filing date is accepted.  The applicant intends to rely on Section 44(e) as a basis for registration.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search of Office Records

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

·         Unsigned Application

·         Foreign Registration Required

·         Mark Description is Accurate but Incomplete

·         Identification and Classification of Goods and Services

 

Unsigned Application:

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). 

 

For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.

 

Foreign Registration Required:

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Mark Description is Accurate but Incomplete:

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following amended description is suggested, if accurate:  The mark consists of the stylized wording “AUTODESK” positioned to the right of a geometrical shaded design in the shape of a single wave. The colors black and white represent background, outlining, shading, and transparent areas and are not claimed as features of the mark. 

 

Identification and Classification of Goods and Services:

 

The bolded portions of the applicant’s identification of goods and services must be clarified because it fails to describe the nature of the goods and services with sufficient particularity and/or included goods and/or services classified in other classes. See TMEP §§ 1402.01; 1402.03.  Specific issues will be addressed within each class below.  As to each of the identifications of goods and recitations of services, applicant must use the common commercial or generic names for the goods and/or services, be as complete and specific as possible, and avoid the use of indefinite words and phrase. See TMEP §§ 1402.01; 1402.03(a).

 

The identification of services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses in registrations to indicate goods and/or services that have been deleted from registrations.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  Id.

 

Applicant has included the term “and/or” in the identification of goods.  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; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods.

 

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” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “and/or” deleted and the goods specified using definite and unambiguous language. 

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitation of services was indefinite.  Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications and recitations set out in the application.  Please see below for a more thorough discussion. 

 

Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information.  In such cases, the wording is presented in bold print within brackets, for example, “Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc., and if software is content- or field-specific, the content or field of use}.”  In such case, applicant must supply the required information within the brackets and must remove the brackets from the identification of goods or recitation of services.

 

It is noted that 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).

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].”  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in-depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

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.

 

Applicant may adopt the following identification of goods and services, if accurate (changes in bold): 

 

International Class 9: Downloadable CAD/CAM software for machine control and general use {Applicant must clarify whether the identified software is downloadable in Class 9 or non-downloadable in Class 42, e.g., “Downloadable CAD/CAM software for machine control and general use” in Class 9 and “providing temporary use of online non-downloadable CAD/CAM software for machine control and general use” in International Class 42}; Downloadable computer aided design (CAD) software for general use {Applicant must clarify whether the identified software is downloadable in Class 9 or non-downloadable in Class 42, e.g., “Downloadable computer aided design (CAD) software for general use” in Class 9 and “providing temporary use of online non-downloadable computer aided design (CAD) software for general use” in Class 42}; Downloadable computer aided manufacturing (CAM) software for machine control and general use {Applicant must clarify whether the identified software is downloadable in Class 9 or non-downloadable in Class 42, e.g., “Downloadable computer aided manufacturing (CAM) software for machine control and general use” in Class 9 and “providing temporary use of online non-downloadable computer aided manufacturing (CAM) software for machine control and general use” in Class 42}; Downloadable computer game software {Applicant must clarify whether the identified software is downloadable in Class 9 or non-downloadable in Class 42, e.g., “Downloadable computer game software” in Class 9 and “Rental of computer game software” in Class 42}; Downloadable computer graphics software {if accurate, applicant must clarify the nature of the goods by indicating that the identified software goods are downloadable to ensure proper classification in Class 9; otherwise, applicant must further clarify the nature of the goods by identifying specifically definite goods in Class 9.}; Downloadable computer software for data processing for architecture, digital prototyping, graphic design, multimedia production, viewing of video entertainment, special effects, film editing, project management, image manipulation, home design, simulation, visualization, rendering of digital objects and images, and data management {applicant must clarify the function of the identified software, and, if accurate, clarify that the identified software is downloadable to ensure proper classification in Class 9, e.g., “Downloadable computer software for data processing for architecture, digital prototyping, graphic design, multimedia production, viewing of video entertainment, special effects, film editing, project management, image manipulation, home design, simulation, visualization, rendering of digital objects and images, and data management”}; Downloadable computer software for processing data for architecture, digital prototyping, graphic design, multimedia production, viewing of video entertainment, special effects, film editing, project management, image manipulation, home design, simulation, visualization, rendering of digital objects and images, and data management and that may be downloaded from a global computer network {applicant must clarify the function of the identified software, and, if accurate, clarify that the identified software is downloadable to ensure proper classification in Class 9, e.g., Downloadable computer software for processing data for architecture, digital prototyping, graphic design, multimedia production, viewing of video entertainment, special effects, film editing, project management, image manipulation, home design, simulation, visualization, rendering of digital objects and images, and data management and that may be downloaded from a global computer network; Downloadable educational software that displays information featuring instruction in design, art, multimedia, image manipulation and architecture {applicant must clarify the function of the identified software, and, if accurate, clarify that the identified software is downloadable to ensure proper classification in Class 9, e.g., Downloadable educational software that displays information featuring instruction in design, art, multimedia, image manipulation and architecture; Downloadable software for processing images, graphics and text {applicant must clarify that the identified software is downloadable to ensure proper classification in Class 9}; Downloadable computer software for aiding, operating, and controlling devices for printing of three-dimensional objects {applicant must clarify that the identified software is downloadable to ensure proper classification in Class 9}; Downloadable computer-aided design (CAD) software for designing and printing of three-dimensional objects {applicant must clarify that the identified software is downloadable to ensure proper classification in Class 9}; Downloadable computer software for scanning and processing of three-dimensional objects; Downloadable computer software for designing, creating, visualizing, editing, optimizing, and analyzing 3D meshes, 3D models, 3D point clouds, and orthographic projections and views {applicant must clarify that the identified software is downloadable to ensure proper classification in Class 9}; downloadable computer software for designing, creating, visualizing, editing, optimizing, and analyzing 3D meshes and 3D models; downloadable computer software for use in creating digital prototypes, virtual prototypes, 3D product presentations and renderings, and 3D design reviews and for streaming 3D data {applicant must clarify that the identified software is downloadable to ensure proper classification in Class 9}; downloadable computer software for use in manufacturing and 3D printing {applicant must clarify that the identified software is downloadable to ensure proper classification in Class 9}; downloadable computer software for use in electronic design automation and for designing and manufacturing printed circuit boards; Downloadable computer software development tools

 

 

International Class 41: Computer education training services; Education services, namely, providing live and on-line seminars and educational programs in the fields of computer aided design and manufacture, graphics, image manipulation, construction and project management, architectural design, digital prototyping, and computer software usage; Training in the use of computer software in the fields of computer aided design and manufacture, graphics, image manipulation, construction and project management, architectural design, digital prototyping, and computer software usage

 

International Class 42: Cloud computing featuring software for computer aided design, graphics design, multimedia production, project management, image manipulation and home design for use by architects, interior designers, civil engineers, construction managers, computer aided designers, multimedia manipulators, prototype creators, and graphics professionals; Computer aided graphic design; Computer project management services; Computer services, namely, creating an on-line community for registered users to publish and share their own content and images online; Providing a secure electronic online system featuring technology which allows users to create, publish, modify, share and produce personalized things from digital content, models and designs; Providing a web site featuring technology that enables users to design their own home layouts, three dimensional objects and construction projects; Providing a web site featuring temporary use of non-downloadable software for tools for image editing, simulation, visualization, rendering of digital objects and images, data management, construction projects, home design, object design and computer graphics; Providing an Internet website portal offering information in the field of computer-aided design; Cloud computing featuring software for aiding, operating, and controlling devices for printing of three-dimensional objects; Software as a service (SAAS) services featuring software for use in designing, creating, visualizing, editing, optimizing, and analyzing 3D meshes, 3D models, 3D point clouds, and orthographic projections and views; Providing temporary use of on-line non-downloadable software for use in designing, creating, visualizing, editing, optimizing, and analyzing 3D meshes, 3D models, 3D point clouds, and orthographic projections and views; Platform as a service (PAAS) featuring computer software platforms providing services, application programming interfaces, and software development kits to enable software developers and businesses, to develop software applications, products, and services; computer software development tools {this identification is indefinite and overly broad as it does not identify any definite services in International Class 41 and appears to identify goods in International Class 9, e.g., “downloadable computer software development tools”. As such, this identification is MOVED to International Class 9}; providing an internet website portal offering information on computer software development for others; software development consulting in the field of printers {indicate subject matter or field of use, e.g., printers, science, math, etc.}; technical support services, namely, troubleshooting of computer software problems in the field of software development {it appears that applicant intended to identify “technical support services, namely, troubleshooting of computer software problems in the field of software development” in Class 42. If accurate, applicant may adopt the proposed amended identification to clarify the nature of the services; otherwise, applicant must further clarify the nature of the services by identifying specifically definite services in Class 42.}; Software as a service (SAAS) services featuring software for use in manufacturing and 3D printing; Providing temporary use of on-line non-downloadable software for use in manufacturing and 3D printing; Software as a service (SAAS) services featuring software for use in electronic design automation and for designing and manufacturing printed circuit boards; Providing temporary use of on-line non-downloadable software for use in electronic design automation and for designing and manufacturing printed circuit boards; providing temporary use of online non-downloadable CAD/CAM software for machine control and general use; providing temporary use of online non-downloadable computer aided design (CAD) software for general use; providing temporary use of online non-downloadable computer aided manufacturing (CAM) software for machine control and general use 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 in or encompassed by those in the original U.S. 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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

Assistance:

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/David I. Dubin/

David I. Dubin

Examining Attorney

Law Office 107

571-270-0958

David.Dubin@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 April 01, 2022 for

U.S. Trademark Application Serial No. 90858708

 

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.  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 trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         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 is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.