UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/928397
MARK: PEP
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Philanthropic Enhancement Programs, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE 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 of the Records of the U.S. Patent & Trademark Office
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).
1. Identification and/or Classification of Goods/Services
The identification of goods/services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods/services. If there is no common commercial or generic name, applicant must describe the products/services and intended consumer(s) as well as its main purpose(s) and intended use(s).
Some of the services are indefinite and must be clarified. Moreover, some of the services could be classified in multiple classes.
The wording “distribution of insurance policies and programs” is vague and must be clarified. However, the examining attorney is not able to suggest any alternative wording that would be acceptable. The applicant must specify what the distribution of insurance policies and programs is. This service appears to differ from the distribution of annuities or the distribution of mutual funds.
The services “marketing” belong in International Class 35 and therefore must be reclassified from International Class 36.
“MARKETING OF FINANCIAL INVESTMENT PROGRAMS; MARKETING OF INSURANCE POLICIES AND INSURANCE PROGRAMS,” in International Class 35.
“Financial services, namely, financial INVESTMENT IN THE FIELD OF [SPECIFY THE FIELD, E.G., REAL ESTATE, SECURITIES, ETC.]; FINANCIAL PLANNING SERVICES, NAMELY, DEVELOPING AND MANAGING CHARITABLE GIVING PROGRAMS ON BEHALF OF high net-worth individuals, corporations, and non-profit entities; distribution of financial investment programs, NAMELY, [SPECIFY THE FINANCIAL INVESTMENT PROGRAMS],” in International Class 36.
Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services. Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date. 37 C.F.R. §2.85(e)(1); TMEP §1402.14. However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 37 C.F.R. §2.85(e)(2).
Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. See TMEP §§702.03(a)(iv), 1402.14.
For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.
2. Requirements for Multi-Class Applications
(1) Applicant must list the goods and/or services by international class; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
Examiner’s Amendment Recommended – If Applicable
The applicant is encouraged to respond to this Office Action by amending the application in a telephone call with the examining attorney to expedite the processing of the application. Generally, only the submission of arguments to overcome a substantive refusal or an informal requirement, a requirement for the submission of a particular document or declaration, or the payment of a fee cannot be handled over the telephone.
Responding to Office Action
The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act of 1946, 15 U.S.C. §§1051 et seq.; The Trademark Rules of Practice, 37 C.F.R. Part 2; and the Office’s Trademark Manual of Examining Procedure (TMEP) (6th ed. 2009). These legal resources are available online at http://www.gov.uspto.report/main/trademarks.htm.
Please note that applicant must explicitly address all issues raised in this Office Action. If the issues are substantive refusals, the applicant may respond with arguments and evidence to overcome the refusal. To respond to requirements/informalities the applicant must specifically request that changes to the record be made.
There is no required format or form for responding to an Office Action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office Actions online at http://www.gov.uspto.report/teas/index.html.
If applicant responds on paper via regular mail, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations. To access the TARR database, applicant will need to provide an application serial number or registration number. The TARR database is available 24 hours a day, 7 days a week.
/Michael A. Wiener/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-8836
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.