Examiners Amendment

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

EXAMINER’S AMENDMENT

 

 

Issue date:  December 03, 2019

International Registration No. 1276003

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Application has been amended as shown below.  The trademark examining attorney is amending the application as follows.  No prior approval or authorization from applicant or applicant’s attorney is required.  TMEP §707.02.

 

IDENTIFICATION OF SERVICES – CLASS 041

 

The identification of services in International Class 041 is amended as follows:

 

Education services, namely, classes, seminars, and workshops in the field of research, education and work to prevent bullying; entertainment and education by means of television and radio regarding research, education, and work to prevent bullying; production, presentation, exhibition and rental of radio and television programmes regarding research, education and work to prevent bullying; production, presentation, distribution, exhibition and rental of motion pictures, films, sound recordings, video recordings, interactive CDs, CD-ROMs and games cartridges for use with electronic games and apparatus regarding research, education, and work to prevent bullying; organisation of exhibitions for cultural, entertainment and educational purposes; organization of sporting events, namely, swimming meets, soccer events, football events, tennis events, baseball events, basketball events, ice-hockey events, field hockey events, water polo events, car racing events, golf events, track and field events, skateboarding events, ice skating events, roller skating events, rollerblading events, pool and billiard events, dart events, weightlifting events, biking events, skiing events, snowboarding events, boating events, bowling events, rugby events, snowmobile events, rodeo events, wrestling events, and boxing events; organizing community festivals featuring a variety of activities, namely, sporting events, art exhibitions, flea markets for the purpose of work against bullying; publishing services, namely, research and educational publishing services in the field of work against bullying; publication of printed matter, books and periodical publications; providing multimedia recordings, interactive CDs and CD ROMs in the field of work against bullying; arranging and conducting of conferences; arranging and conducting of congresses in the field of research, education, and work to prevent bullying; providing educational information in the academic field of research about bullying for the purpose of academic study and advancement; organisation of exhibitions for cultural or educational purposes; publication of electronic books or periodicals on-line; providing online educational electronic publications, not downloadable; education services, namely, providing panel discussions in the field of personal development; publishing services, namely, digital video, audio, and multimedia publishing services; training courses for personal development; production of course material, namely, publication of textbooks and workbooks; production of course materials distributed at seminars namely, publication of textbooks and workbooks; publication of newsletters; education services, namely, providing classes, seminars, workshops in the field of therapeutic treatment; arranging of courses in the field of mental training; implementing training procedures in the field of research, education and work against bullying; training services related to the development of children's mental capacity; academies featuring educational services to others about research and work against bullying; publication of texts regarding research, education and work against bullying; education services, namely, mentoring in the field of research, education, and work against bullying; educational services in the nature of research, education and work against bullying; rental of sound recordings; publication of books; education, namely, seminars, workshops and lectures in the field of research, education, and work against bullying; providing of training in the field of research, education and work against bullying; providing information relating to organizing community sporting and cultural activities; teaching and instruction in the field of research, education, and work against bullying for adults and children; arranging of courses and lectures in the field of research, education, and work against bullying; arranging of seminars; day camp services for educational purposes; sports and outdoor camps; providing of training in the field of research, education, and work against bullying via the Internet; correspondence courses and distance learning in the field of research, education, and work against bullying; production of educational and instructional materials, namely, reports and booklets in the nature of education and research relating to research, education, and work against bullying

 

 See TMEP §§1402.01, 1402.01(e).

 

After the trademark examining attorney issues the examiner’s amendment, applicant will not receive a registration on the Principal Register for the applied-for mark until the mark makes it through the publication process and opposition period.  The publication process starts once the trademark examining attorney issues the examiner’s amendment and the mark is approved for publication in the USPTO’s Trademark Official Gazette, a weekly online publication.  The USPTO will then send a “Notice of Publication” to the applicant specifying the date its mark will publish in this publication.

 

The USPTO publishes applicant’s mark in the Trademark Official Gazette to provide third parties who believe they may be damaged by registration of applicant’s mark an opportunity to oppose registration of that mark within thirty (30) days from the publication date.  An “opposition” is similar to a federal court proceeding, but this proceeding is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal of administrative judges who issue decisions on these matters.  If a third party opposes registration of applicant’s mark by instituting an opposition proceeding, the USPTO will send applicant notice of this opposition.  When this occurs, an applicant may wish to hire an attorney due to the complexity of these proceedings.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s actual use of the mark in commerce or on a foreign registration, the USPTO generally registers the mark and issues a registration certificate within approximately twelve (12) weeks after the publication date.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s bona fide intention to use the mark in commerce, the USPTO generally issues a “Notice of Allowance” within approximately eight (8) weeks after the publication date.  Applicant then has six (6) months from the date of the Notice of Allowance to timely file a “Statement of Use” or to file a request for a six-month “Extension of Time to file a Statement of Use” (extension request).  Extension requests are granted in six-month increments and a maximum of five extension requests can be filed after the issuance of the Notice of Allowance.  If a Statement of Use is not filed within the six months after the Notice of Allowance issued, a Statement of Use must be filed within the time period of a previously granted extension request.  The USPTO will only issue a registration certificate after the trademark examining attorney approves a Statement of Use.

 

For an overview of the time frames for when an applicant should file and the USPTO will issue documents related to a trademark application, see Trademark Application and Post-Registration Process Timelines.  Forms for Statements of Use and extension requests, and additional requirements for intent to use applications, are available online at Intent to Use (ITU) Forms.

 

 

 

 

 

 

 

 

/Justin Severson/

Justin Severson

Examining Attorney

Law Office 111

571-272-6893

justin.severson@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 03, 2019 for

U.S. Trademark Application Serial No. 79177360

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Justin Severson/

Justin Severson

Examining Attorney

Law Office 111

571-272-6893

justin.severson@uspto.gov

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”