Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/969701

 

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

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

THIS REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Unacceptable Identification of Services

 

The wording in the identification of services needs clarification because it is too broad and includes services classified in more than one international class.  TMEP §§1402.01 and 1402.03.  In particular, providing medical information is properly classified in Class 44, while providing information in the field of human intimacy is properly classified in Class 45, unless it is medically-based information.  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.  Applicant may substitute the following wording, if accurate: 

 

Providing medical information in the field of human intimacy; providing medical information services on the topic of sexual dysfunction in International Class 44; and/or

 

Providing information in the field of human intimacy in International Class 45.

 

TMEP §§1402.01 and 1402.03.

 

The applicant is encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO’s “homepage” at www.uspto.gov on the Internet,  or it can be directly accessed at http://tess2.gov.uspto.report/netahtml/tidm.html.  The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  The applicant should use the listings located in this database exactly as worded if possible.  Please note that any listings that include terms within parenthesis and/or brackets must set forth the term or terms that specifically cover the applicant’s goods or services and that the actual parenthesis or brackets may not be included. As always, any identification of goods or recitation of services the applicant chooses to adopt should 1) accurately describe the applicant’s goods or services; 2) be placed in the correct class of goods or services; and 3) list only those goods or services within the scope of those included in the original application.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration.

 

Requirements for Combined Application

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; 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).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Failure to Respond – Abandonment of Specific Services

 

If applicant should fail to respond to this Office action within the six month time limit, then the following services will be deleted from the application:  providing information in the field of human intimacy.  The application will then proceed forward for the remaining services only.  37 C.F.R. §2.65(a).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Elizabeth Pignatello/

Trademark Examining Attorney

Law Office 104

Phone:  571-272-9308

Fax:  571-273-9308

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.