Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/580158

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following.

 

Deferral of Action on Merits

 

The merits of the application will be reviewed after applicant responds to the issues raised in this Office Action.  Although the examining attorney has conducted a preliminary search of the Office records, the indefinite nature of the Identification of Services precludes an exhaustive search for conflicting marks.  The examining attorney will search the mark upon applicant’s clarification of the services.

 

In order to pursue registration, the applicant must respond to the following requirements.

 

Indefinite Recitation of Services

 

The wording “Education; providing of training; entertainment; sporting and cultural activities” in the identification of services needs to be clarified because it is unclear what subject matter is being featured in the “education” and “training” services.  It is also unclear what types of “entertainment” and “sporting and cultural activities” will be provided.  For guidance on writing identifications of 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 frequently updated in accordance with prevailing rules and policies.

 

In addition, for the “studies” in International Class 42, applicant should indicate that the “studies” are “research studies.”

 

Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

Applicant may adopt the following identification of services, if accurate:

 

Education, namely, providing [indicate type of education, e.g., classes, seminars, workshops] in the field of [indicate field of education, e.g., living with and fighting multiple sclerosis]; Providing of training in the field of [indicate field of education, e.g., living with and fighting multiple sclerosis]; Entertainment, namely, [indicate type of entertainment]; Sporting and cultural activities, namely, [indicate types of sporting and cultural activities]; in International Class 41.

 

Scientific and industrial research and conducting research studies in the field of multiple sclerosis; in International Class 42.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

The trademark examining attorney examines identifications of goods and/or services for acceptability in accordance with the Rules of Practice in Trademark Cases and USPTO policies and procedures in effect at the time registration is sought.  Descriptions of goods and/or services found in earlier-filed applications and registrations are not always determinative on the issue of acceptability of such identifications in the present time.  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 frequently updated in accordance with prevailing rules and policies.  See TMEP §§702.03(a)(iv) and 1402.04.

 

Request For Information

 

Applicant must specify whether “BENEFIT” has any significance, aside from trademark significance, in the education, training, entertainment, sporting, cultural activities, and/or research trades or industries.  37 C.F.R. §2.61(b).  Specifically, the applicant must answer the following questions:

 

1)      Does “BENEFIT” have any meaning or significance in the education, training, entertainment, sporting, cultural activities, and/or research trades or industries?

 

2)      Does “BENEFIT” refer to the subject matter that will be provided in the education and training services?

 

3)      Are the entertainment services provided to “BENEFIT” a certain cause or charity?

 

4)      Are the sporting and cultural activities provided to “BENEFIT” a certain cause or charity?

 

5)      Does “BENEFIT” refer to the subject matter of the research in the field of multiple sclerosis?

 

6)      Is “BENEFIT” an acronym?

 

7)      If so, for what phrase does “BENEFIT” stand?

 

8)      Does “BENEFIT” have any other meaning or significance as applied to the services?

 

Trademark Rule 2.61(b) states, “The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant’s failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).

 

 

/Jason Eric Lott/

Jason Eric Lott

Trademark Examining Attorney

Law Office 113

Phone: 571-272-9721

Fax: 571-273-9721

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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