Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

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.

Search Results

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).

· Identification of Services

The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type.

Applicant may adopt the following identification of goods and/or services, if accurate:

CLASS 41: Educational services, namely, {specify the nature of the services, e.g., computer education training}; entertainment services, namely, {specify the nature of the services, e.g., live performances by a musical band}

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

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.

· Issue Regarding Filing Bases

The application specifies both a basis under Trademark Act Section 1 and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(a)-(b), 1126(d); 37 C.F.R. §2.34(a)(1)-(2), (a)(4). Additionally, the applicant has indicated it does not intend to rely on Section 44(e) as a basis for registration.

However, applicant is advised of the following which will apply in the event it does elect to perfect its 44(e) basis:

To obtain registration under Section 44(e) based on a foreign registration that will issue from a foreign application relied on for priority, an applicant must establish that the country in which the foreign application was filed is its country of origin. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02, 1002.04. Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national. 15 U.S.C. §1126(c); TMEP §1002.04. However, the application shows that applicant has a domicile in California, but the foreign application was filed in Trinidad and Tobago.

Because applicant’s domicile is in a country different from that which issued the foreign registration, the record is unclear as to whether applicant’s country of domicile is also applicant’s country of origin. See 15 U.S.C. §1126(c); TMEP §1002.04. When applicant submits the foreign registration, applicant will be required to establish that the country where the foreign application was filed is a country of origin. See TMEP §§1002.01, 1002.02, 1002.04. This requirement may be satisfied by providing a written statement for the record that applicant has a bona fide and effective industrial or commercial establishment in Trinidad and Tobago. TMEP §1002.04. If applicant cannot assert that the country in which the foreign application was filed is a country of origin, registration under Section 44(e) will be refused. 15 U.S.C. §1126(c); TMEP §1002.01. In that case, applicant may amend the application to delete the Section 44(e) basis and rely solely on Section 1(b) as a basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §806.04.

If the U.S. application satisfied the requirements of Section 44(d) as of the filing date of that application, applicant may retain the priority filing date without perfecting the Section 44(e) basis, as long as there remains a valid basis for registration under Section 1. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

CONTACT INFORMATION

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. §2.191; 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.

/Christine Martin/

Examining Attorney

Law Office 104

(571) 272-1630

christine.martin@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.