Priority Action

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:

DATABASE SEARCH: 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).

ISSUES APPLICANT MUST ADDRESS: On June 9, 2016, the trademark examining attorney and Karl Larson discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

MARK DIFFERS ON DRAWING AND SPECIMEN – REFUSAL

Registration is refused because the specimen does not show the applied-for mark in the drawing in use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). Specifically, the specimen shows the mark in the colors white, green and blue; however, the drawing displays the mark in the colors black, green and blue.

The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a). Because the mark in the drawing is not a substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for mark in commerce on or in connection with applicant’s goods and/or services. See TMEP §807.12(a).

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

(1) Submit a new color drawing of the mark, which agrees with the colors of the mark on the specimen and does not materially alter the original mark, and, if appropriate, an amendment to the color claim and/or mark description that conforms to the new drawing.

(2) Submit a new black-and-white drawing of the mark, with a statement authorizing the deletion of any color claim and an amendment of the mark description deleting any reference to color.

(3) Submit a different specimen (a verified “substitute” specimen) showing the applied-for mark in use in commerce in the colors depicted on the drawing at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/J3_2.jsp .

AMENDED COLOR CLAIM AND DESCRIPTION OF MARK REQUIRED

Applicant must amend the color claim and mark description to identify all the colors in the mark drawing. See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii). The color black has been omitted from the color claim and mark description.

A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. However, if black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). In this case however, applicant cannot claim that black represents background elements of the mark because a portion of the literal element appears in color.

The following color claim and mark description are suggested, if accurate:

Color claim: “The colors blue green and black are claimed as a feature of the mark.”

Mark description: “The mark consists of the wording “HOOPS” in a stylized font appearing in the colors blue, green and black.”

In the alternative, applicant may amend the drawing to a grayscale or black and white format.

IDENTIFICATION UNACCEPTABLE - REQUIREMENT

Applicant has identified the following:

“Providing temporary use of on-line cloud computing software accessed through a computer network for personnel recruitment and job search information services; providing an interactive computer database featuring recruitment and employment information; Creation and provision of resources to assist job seekers and employers; Data gathering, analysis and provision of information relating to hiring, namely, verification of prospective employee identity for employers; Screening and verification services of prospective employees for employers” in Class 042.

Unfortunately, the italicized wording above is insufficiently definite for registration purposes. See TMEP §1402.01. Applicant must identify the particular common commercial name of the creation and provision services, e.g., providing online computer databases and information in the field of employment information and job placement (Class 035 services). Additionally, the databases must be identified as being provided online in order to be classified as a service. If the databases are recorded on discs or downloadable they will be classified in Class 009.

Applicant has classified the following services in International Class 042: “providing an interactive computer database featuring recruitment and employment information; Data gathering, analysis and provision of information relating to hiring, namely, verification of prospective employee identity for employers; Screening and verification services of prospective employees for employers.” However, the proper classification for each item is as follows:

providing an interactive computer database featuring recruitment and employment information – Class 035;

data gathering, analysis and provision of information relating to hiring, namely, verification of prospective employee identity for employers; Screening and verification services of prospective employees for employers – Class 045.

Additionally, applicant has provided the application fee for only 1 international class. Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

Applicant may adopt the following, if accurate:

providing online computer databases and information in the field of employment information and job placement; providing an online interactive computer database featuring recruitment and employment information – Class 035;

Providing temporary use of on-line cloud computing software accessed through a computer network for personnel recruitment and job search information services – Class 042;

Applicant’s 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 services or add 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 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 services will further limit scope, and once 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.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on use in commerce under Section 1(a):

(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.

(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.

(4) Submit a specimen for each international class. While the current specimen does not match the drawing (see above), should this issue be resolved, the specimen would be acceptable for class 045 only.

Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.

(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.”

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

/SeanCrowley/

Examining Attorney

Law Office 116

U.S. Patent and Trademark Office

571.272.8851

sean.crowley@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.