Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

SECOND OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number 76/396034

 

This letter responds to the applicant’s communication filed on February 3, 2003.

 

Resolved Issue:

 

Applicant’s revised identification of goods and recitation of services are ACCEPTABLE. 

 

Unresolved Issues:

 

Likelihood of Confusion

 

(1)        U.S. Registration No. 2603912 (THRIVE!!)

 

In connection with U.S. Registration No. 2603912, the refusal under Section 2(d) is MAINTAINED.  The marks are virtually identical and Registrant’s broadly worded identification, namely, “educational consulting,” may encompass Applicant’s revised services, which include consulting services related to training and teaching in a specific field.  The question of registrability of an applicant’s mark must be decided on the basis of the identification of goods or recitation of services set forth in the application and in the cited registration, regardless of what the record may reveal as to the particular nature of an applicant’s goods/services, the particular channels of trade or the class of purchasers to which sales of the goods or services are directed. In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) ([extrinsic] evidence [regarding channels of trade] must be disregarded since there is no restriction in the application or registration limiting the goods to particular channels of trade or classes of customers). 

 

(2)        U.S. Registration No. 2579584 (THRIVEONLINE)

 

With regard to U.S. Registration No. 2579584, the refusal under Section 2(d) is WITHDRAWN based on the amendments made to applicant’s identification of goods and recitation of services. 

 

 (3)       Prior Pending Application Serial Number 78/052344  (THRIVE)

 

The reference to application serial number 78/052344 is MAINTAINED.  The marks are virtually identical and the services are highly similar, if not identical. 

 

If the referenced application has been or will be assigned to the applicant, the applicant is responsible for proving its ownership of that mark.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).  37 C.F.R. §3.73. 

 

(4)        Prior Pending Application Serial Number 75/867899  (THRIVEONLINE)

 

Based on changes to applicant’s identification of goods and recitation of services, the reference to application serial number 75/867899  is WITHDRAWN. 

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 480; FAX (703) 746-6228

(703) 285-1184 (M, T, W, F)

 

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

To respond to this Office action electronically, the applicant must:

 

o       include the serial number in the subject line;

o       send the response to ecom113@uspto.gov.  Responses sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;

o       submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only.  NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);

o       respond within six-months from the Office action mailing date, or within the period stated in the Office action;

o       respond in English; and

o       sign the response electronically, e.g. /john smith/.  See 37 CFR §1.4(d)(1)(iii); TMEP §§304.08 and 804.05.

 

If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.”  Note: only one e-mail address may be used for correspondence.  TMEP §804.07. 

 

The examining attorney will send correspondence only to the e-mail address listed in the application.  A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.