UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION INQUIRY:  RESPONSE REQUIRED

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 8/21/2011

 

 

  X    FOREIGN REGISTRATION:  The trademark examining attorney previously suspended action on this application pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin or proof of renewal of the foreign registration.  Applicant must specify the status of the relevant foreign application or registration renewal.  TMEP §§716.02(b), 716.05, 1003.04(c); see 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii).  Applicant may respond by stating that the foreign application or renewal is still pending or by submitting a true copy, a photocopy, a certification, or a certified copy of the foreign registration or renewal document.  TMEP §§716.05, 1003.04(c), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).

 

      CIVIL PROCEEDING(S):  The trademark examining attorney previously suspended action on this application pending termination of a civil proceeding(s) relevant to the registrability of applicant’s mark.  Applicant must specify the status of the civil proceeding(s).  TMEP §§716.02(d), 716.05.  If it is still pending, applicant may respond by providing a statement to that effect.  TMEP §716.05.  If the proceeding(s) has been terminated, applicant must so specify and provide a copy of any final decision or relevant agreement.

 

 

Requirement for an Acceptable Identification of Goods and Services

The following requirement is continued and maintained:  requirement for an acceptable identification of goods and services.

 

 

Identification of Goods and Services

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.”  TMEP §1402.01(a).  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class.  Id.

 

For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class.  Id.  However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable:  “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.”  Id.

 

The suggested changes are in boldface and underlined.

 

International Class 016

The wording “paper articles” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Applicant may substitute the following wording, if accurate.

 

 

Paper; printed matter, namely, printed charts and advertisements; paper articles, namely, [specify, e.g., advertising signs of paper]; advertising materials, namely, printed advertising boards of paper or cardboard; publicity and promotional materials, namely, advertising signs of paper or cardboard; printed leaflets, pamphlets, paper fact sheets, brochures, periodicals and annual reports featuring information on advertising and marketing in the field of healthcare; stationery; newspapers; publications, namely, brochures and workbooks in the field of advertising and marketing in the field of healthcare; printed instruction guides in the field of advertising and marketing in the field of healthcare; magazines in the field of advertising and marketing in the field of healthcare; and books in the field of advertising and marketing in the field of healthcare in International Class 016.

 

 

International Class 035

International Class 035 is acceptable as written.

 

Arranging and conducting business conferences in the field of healthcare; brand concept and brand development services for others; advertising copywriting; advertising services; information distribution services, namely, dissemination of advertising matter; marketing services; public relation services; market research and business analysis services; advisory services relating to market research; analysis of market research data and statistics; conducting of market research and marketing studies; market analysis and strategic marketing services; preparation of custom advertisements for others; preparing business reports; promotional services; business management services; business advice relating to marketing; business administration; management consultancy services; consultancy services relating to business operations; business management advisory and consultancy services; consulting in sales techniques and sales programs; services relating to the creation and brand establishment of trademarks, trade names and domain names; business evaluation of advertising and marketing in the field of healthcare; benchmarking services, namely, formulation of best practices for advertising and marketing in the field of healthcare; consultancy services relating to brand development; corporate event management services; providing information and advisory services relating to all the aforesaid services in International Class 035.

 

International Class 041

The identification is acceptable as written, with corrections to the punctuation.

 

Information distribution services, namely, dissemination of educational materials of others in the field of healthcare; copy writing, namely, writing of brochures, leaflets, printed fact sheets, newspapers, workbooks and articles for periodicals; education services, namely, providing classes, seminars, workshops, conferences and lectures in the field of healthcare; education programs, namely, conducting programs in the field of healthcare; training services in the field of healthcare; book publishing; arranging and conducting educational conferences in the field of healthcare; consultancy services in the field of educational training relating to healthcare in International Class 041.

 

International Class 042

The wording “computer services relating to content management, namely, creation for Internet websites” in the identification of services is indefinite and must be clarified because it can be interpreted to identify services in more than one International Class.  See TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate.

 

Computer software design; computer software development; custom development of application software; computer consultancy services; design services, namely, commercial art and graphic design; design of marketing material, namely, brochures, pamphlets, advertisements and advertising presentations; design of printed matter for use in marketing; computer services relating to content management, namely, [specify, e.g., hosting of digital content on the Internet]; art work design; graphic design services; graphic illustration services for others; web-site design services for others; computer programming services; website development for others; design and development of computer hardware and software in International Class 042.

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

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.

 

 

 

 

/allison holtz/

Allison Holtz

Trademark Examining Attorney

allison.holtz@uspto.gov

571-272-9383

 

                                                                       

TO RESPOND TO THIS LETTER:  Go to http://teasroa.gov.uspto.report/rsi/rsi.  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.

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 8/21/2011 FOR

SERIAL NO. 77961992

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 8/21/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.