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:  July 15, 2022

 

 

 

Introduction

 

The referenced application and the Voluntary Amendment dated May 18, 2022 have 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.

 

Summary of Issues:

 

• Search Results – No Conflicting Marks Found
• Requirement to Amend Identification of Goods and Services
• Requirement to Disclaim Descriptive Wording

 

Search Results – No Conflicting Marks Found

 

The trademark examining attorney has searched the USPTO’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).

Requirement to Amend Identification of Goods and Services

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

Applicant may adopt the following wording in International Class 9, if accurate. Suggestions are in bold.

 

• International Class 009: Recorded computer software for performing product service level monitoring, analysis, and reporting as it pertains to the purchasing and distribution of natural and specialty foods and related products; Downloadable computer software for performing product service level monitoring, analysis, and reporting as it pertains to the purchasing and distribution of natural and specialty foods and related products

 

• International Class 035: acceptable as submitted

 

• International Class 042: acceptable as submitted

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Requirement to Disclaim Descriptive Wording

 

Applicant must disclaim the wording “CONNECT BI” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from the applicant’s website shows that BI means business intelligence and the identified goods and services are used as business intelligence tools to enhance the food supplying process. Additionally, CONNECT is defined as: to join together so as to provide access and communication. See attached definition. Thus, the wording merely describes applicant’s goods and/or services because applicant provides non-downloadable and downloadable computer software to provide access to business intelligence tools.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “CONNECT BI” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

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

 

/Mariah L. Bayless-Davis/

Mariah L. Bayless-Davis

Examining Attorney, Law Office 303

U.S. Patent and Trademark Office

mariah.baylessdavis@uspto.gov

(571) 270-5718

 

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.