U.S. Application Serial No. 79374930
Mark: BLOO
Correspondence Address:
LegalMatters.com B.V. Keizersgracht 620 NL-1017 ER Amsterdam NETHERLANDS |
Applicant: Vaktik Holding B.V.
Reference/Docket No. N/A
Correspondence Email Address:
International Registration No. 1741829
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
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.
Summary of issues:
Refusal
:
Section 2(d) – Likelihood of confusion
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
The stated refusal refers to the following goods and services only:
International Class 009: Downloadable virtual goods, namely, computer programmes containing sunglasses, eyewear, for use online and in virtual online worlds; downloadable virtual goods, namely, non-exchangeable tokens (NFT) for creating and trading digital collectibles using blockchain-based software technology for sunglasses, eyewear; dowloadable digital goods based on replaceable tokens (FT) and non-replaceable tokens (NFT), namely, sunglasses, spectacles; downloadable software for the production, automated and non-automated creation and automated and non-automated modification of interactive media, video clips, photography, music, data, visual effects, digital files, digital collectibles, crypto collectibles and non-replaceable tokens on a blockchain network with or linked to virtual digital or physical sunglasses, eyewear; downloadable computer programmes for electronically trading, storing, receiving, accepting and transmitting interactive media, video clips, photography, music, data, visual effects, digital files, digital collectibles, crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual digital or physical sunglasses, eyewear; downloadable computer programmes for electronically trading, storing, receiving, accepting and transmitting crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual, digital or phyical sunglasses, eyewear for in online environments, virtual online environments, augmented reality virtual environments
International Class 025: Clothing; footwear; headgear; belts and waist belts [clothing]; clothing accessories, namely, leather belts, cuffs, braces [suspenders] and scarves
International Class 035: Advertising; advertising and marketing services provided through social media; publishing of advertising printed matter; publishing of advertising materials; merchandising; publishing of merchandising items for the purpose of advertising, promotion and marketing; marketing; market operations, market research and market analysis; promotional activities; publicity; public relations; advertising agency; sales promotion for third parties, import and export agencies of jewellery, suitcases, rucksacks, trunks and travel bags, handbags, wallets, clothing, footwear, headwear, belts; commercial-business intermediary services in the purchase and sale, import and export, wholesale and retail services in the field of sunglasses, spectacles; wholesale and retail services of sunglasses, spectacles; retail services of virtual goods, namely, sunglasses, spectacles for use in virtual online worlds; online retailing of virtual merchandise, namely, sunglasses, spectacles; online retail and marketplace services for virtual goods, digital collectibles, crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual, digital or physical sunglasses, eyewear; consultancy and information services relating to the aforementioned services; the aforementioned services also via electronic networks, such as the Internet
It does not bar registration for the other goods and services.
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5224791, 5568798, and 5832098. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations at Attachments 1-3.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant's mark:
BLOO (standard characters)
Registrants' marks:
1. BLOO (standard characters)
2. BLEU (standard characters)
3. BLOO (standard characters)
First
, applicant’s mark is BLOO (standard characters) and registrants' marks are BLOO (standard characters). These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Second, applicant's mark, BLOO (standard characters), and registrant's mark, BLEU (standard characters), because
the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv).
Therefore, the applicant's and registrants' marks are confusingly similar.
Similarity of the goods and services
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Applicant's goods and services:
International Class 009: Downloadable virtual goods, namely, computer programmes containing sunglasses, eyewear, for use online and in virtual online worlds; downloadable virtual goods, namely, non-exchangeable tokens (NFT) for creating and trading digital collectibles using blockchain-based software technology for sunglasses, eyewear; dowloadable digital goods based on replaceable tokens (FT) and non-replaceable tokens (NFT), namely, sunglasses, spectacles; downloadable software for the production, automated and non-automated creation and automated and non-automated modification of interactive media, video clips, photography, music, data, visual effects, digital files, digital collectibles, crypto collectibles and non-replaceable tokens on a blockchain network with or linked to virtual digital or physical sunglasses, eyewear; downloadable computer programmes for electronically trading, storing, receiving, accepting and transmitting interactive media, video clips, photography, music, data, visual effects, digital files, digital collectibles, crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual digital or physical sunglasses, eyewear; downloadable computer programmes for electronically trading, storing, receiving, accepting and transmitting crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual, digital or phyical sunglasses, eyewear for in online environments, virtual online environments, augmented reality virtual environments
International Class 025: Clothing; footwear; headgear; belts and waist belts [clothing]; clothing accessories, namely, leather belts, cuffs, braces [suspenders] and scarves
International Class 035: Advertising; advertising and marketing services provided through social media; publishing of advertising printed matter; publishing of advertising materials; merchandising; publishing of merchandising items for the purpose of advertising, promotion and marketing; marketing; market operations, market research and market analysis; promotional activities; publicity; public relations; advertising agency; sales promotion for third parties, import and export agencies of jewellery, suitcases, rucksacks, trunks and travel bags, handbags, wallets, clothing, footwear, headwear, belts; commercial-business intermediary services in the purchase and sale, import and export, wholesale and retail services in the field of sunglasses, spectacles; wholesale and retail services of sunglasses, spectacles; retail services of virtual goods, namely, sunglasses, spectacles for use in virtual online worlds; online retailing of virtual merchandise, namely, sunglasses, spectacles; online retail and marketplace services for virtual goods, digital collectibles, crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual, digital or physical sunglasses, eyewear; consultancy and information services relating to the aforementioned services; the aforementioned services also via electronic networks, such as the Internet
Registrants' goods and services:
1. International Class 025: Apparel, namely, headwear, footwear, shirts, pants, shorts, T-shirts, jackets, socks, dresses, skirts, blouses, sweaters,
sweatshirts, sweatpants.
2. International Class 009: Sunglass lenses; Sunglasses; Sunglasses and spectacles; Cases for eyeglasses and sunglasses; Cases for spectacles and sunglasses; Eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor; Frames for spectacles and sunglasses; Spectacles and sunglasses.
3. International Class 035: On-line advertising and marketing services.
First, applicant's goods in International Class 009 and services in International Class 035 are closely related to registrant's goods in International Class 009 because the applicant's goods and services feature sunglasses and eyewear and the registrant's goods are eyewear.
Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
Second, applicant's goods in International Class 025 are similar to registrant's goods in International Class 025 because both are types of clothing.
Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related. Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Gen. Shoe Corp. v. Hollywood-Maxwell Co., 277 F.2d 169, 169-70, 125 USPQ2d 443, 443-4 (C.C.P.A. 1960) (shoes and hosiery related to brassieres); In re Embiid, 2021 USPQ2d 577, at *29-30 (TTAB 2021) (shoes related to shirts and sweat shirts); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).
Third,
the registration uses broad wording to describe "On-line advertising and marketing services" in International Class 035, which presumably encompasses all goods of the type described, including applicant’s more narrow "Advertising; advertising and marketing services provided through social media; publishing of advertising printed matter; publishing of advertising materials; merchandising; publishing of merchandising items for the purpose of advertising, promotion and marketing; marketing; market operations, market research and market analysis; promotional activities; publicity; public relations; advertising agency; sales promotion for third parties, import and export agencies of jewellery, suitcases, rucksacks, trunks and travel bags, handbags, wallets, clothing, footwear, headwear, belts" in International Class 035. See, e.g., Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *44 (TTAB 2022); In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *49. Thus, applicant’s and registrant’s services are related.
Therefore, the applicant's and registrant's goods and services are confusingly similar.
Conclusion
Since the applicant's and registrants' marks are similar and the goods and services are similar, there is a likelihood of confusion as to the source of the applicant's goods and services. Therefore, registration must be refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Moreover, t
he overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Advisory:
Prior-filed application
The filing date of pending U.S. Application Serial No. 97597636 precedes applicant’s filing date. See attached referenced application at Attachment 4. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Requirement:
Identification of goods
and services clarification
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
First, t
he identification of goods and services is indefinite and must be clarified because some of the wording is too broad making the
nature of the goods and services identified unclear. Applicant must clarify the identification by specifying the nature of the goods and services in the assigned international classes as is
shown in the suggested identification below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Second,
the identification of goods and services contains parentheses and brackets. Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification. See TMEP §§1402.04, 1402.12. The only exception for including parenthetical information in identifications is if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” See TMEP §1402.12.
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.
the word “clothing” in the identification of goods in International Class 25 is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Examples of acceptable identifications for clothing and/or apparel in International Class 25 include the following: “shirts,” “shorts,” “pants,” “coats,” “dresses,” “skirts,” and “socks.” Applicant may also amend the identification by inserting the word “namely,” after “clothing” and then listing the specific types of clothing items.
Fourth,
the word “headgear” in the identification of goods must be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). This word is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although headgear may be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, 26, and 28), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Applicant may (1) amend “headgear” to “headwear,” and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items in that class (e.g., headgear, namely, sports caps and hats, for International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
Fifth,
the identification for software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable or recorded. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Sixth,
the identification for “sales” in International Class 35 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant. See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970). “Sales” or “selling” normally refers to selling one’s own goods or services and is not a registrable service rendered for the benefit of others. See TMEP §§1301.01(a)(ii), 1402.11.
Therefore, applicant must delete “sales” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring {indicate field or type of goods, e.g., auto parts, clothing, jewelry},” “wholesale distributorships featuring {indicate field or type of goods, e.g., auto parts, clothing, jewelry},” and “on-line wholesale and retail store services featuring {indicate field or type of goods, e.g., auto parts, clothing, jewelry}.”
Seventh,
the identification for “retail services” in International Class 35 is indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.
If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to indicate (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring {indicate field or type of goods, e.g., auto parts, clothing, jewelry},” “retail distributorships in the field of {indicate field or type of goods, e.g., auto parts, clothing, jewelry},” and “retail outlets featuring {indicate field or type of goods, e.g., auto parts, clothing, jewelry}.” See TMEP §§1301.01(a)(ii), 1402.11.
E
ighth,
the identification for “wholesale services” in International Class 35 is indefinite and must be clarified because it could include a wide array of services related to wholesaling – from accounting to advertising and marketing services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.
Applicant must amend the identification to indicate the nature of the wholesale activity that applicant provides (e.g., wholesale distributorships, wholesale services by direct solicitation by sales agents, or wholesale store services). If the services are in the nature of wholesale stores, direct solicitation, or distributorships, the identification should also indicate the field or type of goods offered through the wholesale services, e.g., “wholesale distributorships featuring {indicate field or type of goods, e.g., auto parts, clothing, jewelry},” “wholesale services by direct solicitation by sales agents in the field of {indicate field or type of goods, e.g., auto parts, clothing, jewelry},” and “wholesale store services featuring {indicate field or type of goods, e.g., auto parts, clothing, jewelry}.” See TMEP §§1301.01(a)(ii), 1402.11.
Ninth,
the identification for online retail services featuring non-fungible tokens (NFTs) in International Class 35 is indefinite. Identifications for retail or online retail services featuring goods authenticated by NFTs must indicate the type of (1) retail service being provided as such services could include a wide array of retail or marketplace support services – from accounting to advertising and marketing services – in addition to retail store-type services, and (2) good(s) authenticated by the NFT, if applicant offers retail store-type services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. In this case, the identification must be clarified to indicate the type of retail services and good(s) being authenticated by the NFT.
Tenth,
the identification for the service of providing an online marketplace for buyers and sellers of non-fungible tokens (NFTs) in International Class 35 is indefinite because the wording “non-fungible tokens (NFTs)” does not clearly indicate goods in trade. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. An NFT is a unique identifier that “cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership (as of a specific digital asset and specific rights relating to it).” TMEP §1401.15(b). Identifications for providing an online marketplace for buyers and sellers regarding products authenticated by non-fungible tokens (NFTs) must clarify that the services consist of providing such a marketplace for “goods” authenticated by NFTs or specify the type of goods (e.g., downloadable music files) authenticated by NFTs.
The following are examples of acceptable formats for identifying the service of providing an online marketplace of goods authenticated by NFTs in International Classes 35 (additional information must be provided in identifications below where indicated in the curly brackets):
Providing an online marketplace for buyers and sellers of goods authenticated by non-fungible tokens (NFTs)
Provision of an online marketplace for buyers and sellers of {indicate goods, e.g., sneakers, paintings} authenticated by non-fungible tokens (NFTs)
Provision of an online marketplace for buyers and sellers of downloadable image files authenticated by non-fungible tokens (NFTs)
Provision of an online marketplace, using blockchain technology, for buyers and sellers of downloadable digital {indicate type of downloadable digital goods, e.g., art images, music, video clips} authenticated by non-fungible tokens (NFTs)
Eleventh,
the identification for educational services is indefinite because it does not indicate the type of educational service provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing.
Applicant must specify the nature of the educational service being provided. If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management).
Suggested identification
Instructions and suggested changes are shown in bold text. Applicant may adopt the following identification, if accurate:
International Class 009: Downloadable virtual goods, namely, computer programmes featuring travel cases, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories for use {clarify the nature of the online use, e.g., in online virtual environments} and in virtual online worlds; {clarify the nature of the downloadable virtual goods, namely, non-exchangeable tokens (NFT) for creating and trading digital collectibles using blockchain-based software technology for trunks, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headwear, toys, belts, jewellery, waist belts and clothing accessories, e.g., Digital collectibles in the nature of downloadable image files of trunks, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headwear, toys, belts, jewellery, waist belts and clothing accessories authenticated by non-fungible tokens (NFTs)}; {specify the nature of the dowloadable digital goods based on replaceable tokens (FT) and non-replaceable tokens (NFT), namely, trunks, umbrellas, parasols, sunglasses, spectacles, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories, e.g.,
Downloadable image files of trunks, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headwear, toys, belts, jewellery, waist belts and clothing accessories authenticated by non-fungible tokens (NFTs)
}; {specify the format of the software, e.g., downloadable, recorded} computer and video game development software;
computer game programmes downloaded from the Internet; {specify the format of the entertainment software, e.g., downloadable, recorded} entertainment software for {specify the function of the software, e.g., playing games};
{specify the format of the programs, e.g., downloadable, recorded}
computer game programmes; {specify the type of software platforms, e.g., Downloadable computer software platforms for [indicate purpose of the platforms, e.g., application development, web hosting, database management], Recorded computer software platforms for [indicate the purpose of platforms, e.g., application development, web hosting, database management]}; {specify the format of the software, e.g., downloadable, recorded} multimedia and industrial software for {specify the function of the software, e.g., playing video games}; downloadable software applications
for {specify the function of the software, e.g., playing video games}
; downloadable interactive entertainment software for playing video games;
{specify the format of the software, e.g., downloadable, recorded}
virtual and augmented reality software for {specify the function of the software, e.g., viewing} concerts and shows in online virtual worlds; downloadable software for the production, automated and non-automated creation and automated and non-automated modification of interactive media, video clips, photography, music, data, visual effects, digital files, digital collectibles, crypto collectibles and non-replaceable tokens on a blockchain network with or linked to virtual digital or physical travel cases, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories; downloadable computer programmes for electronically trading, storing, receiving, accepting and transmitting interactive media, video clips, photography, music, data, visual effects, digital files, digital collectibles, crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual digital or physical travel cases, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories; downloadable computer programmes for electronically trading, storing, receiving, accepting and transmitting crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual, digital or physical travel cases, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories, digital animated and non-animated characters and avatars, digital overlays, skins, toys and trading cards for use in online environments, virtual online environments, and augmented reality virtual environments
International Class 025: Clothing, namely, {specify the type of clothing, e.g., shirts, pants, jackets};
footwear; headwear; {specify the type of belts, e.g., clothing} belts and waist
belts[ clothing] ; clothing accessories, namely, leather belts for clothing, cuffs, braces[
suspenders] for clothing and scarves
International Class 035: Advertising; advertising and marketing services provided through social media; management of commercial affairs, namely, {specify the type of services for the management of commercial affairs, e.g., commercial management, commercial business management}; business administration; {specify the type of administrative services, e.g., business, office, employee} administrative services; provision of business information; publishing of advertising printed matter; publishing of advertising materials; {specify the type of merchandising services, e.g., product merchandising for others, business merchandising display services}; publishing of merchandising items for the purpose of advertising, promotion and marketing, namely, {specify the nature of services for the publishing of merchandising items for the purpose of advertising, promotion and marketing, e.g., publishing of advertising texts, publication of publicity materials}; marketing services; market operations, namely, {specify the nature of the market operations services, e.g., market forecasting, market assessment services, market intelligence services}, market research and market analysis; promotional activities, namely, {specify the type of promotional activities, e.g., promotional marketing services, development of promotional campaigns, promotional sponsorship of [indicate specific event or activity]}; publicity; public relations; advertising agency; organisation and management of consumer loyalty programmes, namely, {specify the nature of the services for the organisation and management of consumer loyalty programmed, e.g., business administration of consumer loyalty programs, promoting the goods and services of others by means of a loyalty rewards card scheme, providing incentive award programs through issuance and processing of loyalty points for purchase of a company's goods and services}; e-commerce business consultancy; sales promotion for third parties; import and export agencies of jewellery, suitcases, rucksacks, trunks and travel bags, handbags, wallets, clothing, footwear, headwear, and belts; holding presentations for business purposes, namely, {specify the type services for holding presentations for business purposes, e.g., organisation and conducting of product presentations}; commercial-business intermediary services in {specify the nature of the purchase and sale services, e.g., procurement in the nature of purchasing goods for others}, import and export agencies, and {specify the type of wholesale and retail services, e.g., wholesale and retail store services} in the field of trunks, umbrellas, parasols, sunglasses, spectacles, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories;
{specify the type of wholesale and retail services, e.g., wholesale and retail store services}
featuring trunks, umbrellas, parasols, sunglasses, spectacles, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories; {specify the type of retail services, e.g., online retail store services} featuring virtual goods, namely, trunks, umbrellas, parasols, sunglasses, spectacles, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories for use in virtual online worlds; {specify the nature of the online retailing services, e.g., online retail store services} featuring virtual merchandise, namely, trunks, umbrellas, parasols, sunglasses, spectacles, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories for use in online virtual worlds; {specify the type of online retail and marketplace services for featuring virtual goods, digital collectibles, crypto collectibles and non-exchangeable tokens on a blockchain network with or linked to virtual, digital or physical travel bags, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headwear, toys, belts, jewellery, waist belts and clothing accessories, digitally animated and non-animated characters, e.g., Online retail store services featuring downloadable image files of travel bags, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headwear, toys, belts, jewellery, waist belts and clothing accessories, and digitally animated and non-animated characters authenticated by non-fungible tokens (NFTs); Provision of an online marketplace for buyers and sellers of downloadable digital image files of travel bags, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headwear, toys, belts, jewellery, waist belts and clothing accessories, and digitally animated and non-animated characters authenticated authenticated by non-fungible tokens (NFTs)}; {specify the type of online retailing services, e.g., online retail store services} featuring virtual merchandise, namely, avatars, digital overlays, skins, toys and trading cards for use in online virtual worlds;
{specify the type of online retailing services, e.g., online retail store services} featuring
physical and virtual merchandise, namely, {specify the type of merchandise, e.g., clothing} for use by
members of virtual online communities in connection with a designated website featuring fictitious characters; booking of performing artists for events (services of a
promoter), namely, {specify the nature of the services for the booking of performing artists for events, e.g., management of performing artists, entertainment marketing services in the
nature of marketing, promotion and advertising for recording and performing artists}; consultancy and information services relating to the aforementioned services; the
aforementioned services also via electronic networks, such as the Internet
International Class 041: Education services, namely, providing {indicate form of educational activity, e.g., classes,
seminars, workshops} in the field of {indicate subject matter or field of educational activity}; training services in the field of {indicate field or subject
matter}; entertainment, namely, {specify the type of entertainment services, e.g., organization of electronic game competitions, live music concerts};
entertainment, namely, the provision of online computer games, electronic online games and online video games; provision of non-downloadable interactive games, namely, {specify the
nature of the services for the provision of non-downloadable interactive games, e.g., entertainment services in the nature of providing temporary use of non-downloadable interactive
games}; information related to entertainment provided online; sports and cultural activities, namely, {specify the type of sports and cultural activities, e.g.,
organizing community sporting and cultural events}; {specify the type of music performances services, e.g., presentation of musical performances, live performances
by a musical group, entertainment services in the nature of live musical performances}; fan clubs (entertainment); entertainment services via
television and the Internet, by means of films, television programmes, music and other media content, not downloadable, namely, {specify the type of entertainment services via
television and the Internet, by means of films, television programmes, music and other media content, not downloadable, e.g, provision of non-downloadable films and television programmes via a
video-on-demand service}; audio and video recording and production; editing or recording of sound and images; production and
organisation in the nature of {specify the nature of the organization services, e.g., post-production} of {specify the
type of shows, e.g, television} shows and live shows in the nature of {specify the nature of the live shows, e.g., live television shows}; production of
music videos; entertainment services, namely, organising and holding parties[ entertainment] ; publishing of magazines,
journals and books, and multimedia
publishing
; production and composition of sound and images, namely, {specify the nature of the services for the production and composition of sound and images, e.g., production of sound recordings, production of sound and image recordings on sound and image carriers, photographic composition for others, music composition services}; entertainment and amusement, namely, provision of online non-downloadable virtual goods, namely, trunks, umbrellas, parasols, sunglasses, eyewear, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories, for use in virtual online entertainment environments; entertainment services, namely, {specify the nature of the services for the provision of online, non-downloadable interactive media, video clips, photography, music, data, visual effects, digital collectibles and crypto collectibles related to non-replaceable tokens on a blockchain network with or linked to digital or physical travel cases umbrellas, parasols, sunglasses, spectacles, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories, for use in virtual online entertainment environments, e.g., providing on-line, non-downloadable virtual travel cases umbrellas, parasols, sunglasses, spectacles, perfumes, cosmetics, backpacks, bags, sports bags, purses, horological and chronometric instruments, sports equipment, luggage tags, clothing, footwear, headgear, toys, belts, jewellery, waist belts and clothing accessories for use in virtual environments created for entertainment purposes, Providing on-line nondownloadable videos featuring [indicate subject matter e.g., music, mathematics instruction]
for use in virtual environments created for entertainment purposes
, providing non-downloadable prerecorded music
for use in virtual environments created for entertainment purposes
}; entertainment services, namely, {specify the nature of the services
for the provision of digital animated and non-animated designs and characters, avatars, digital overlays, skins, toys and trading cards for use in online environments, virtual online
environments, augmented reality virtual environments, e.g, providing on-line, non-downloadable virtual goods, namely, digital animated and non-animated designs and characters, avatars, digital
overlays, skins, toys and trading cards for use in virtual environments created for entertainment purposes}; entertainment, namely, provision of online, non-downloadable editions
of books, magazines and weekly and monthly magazines related to games and software; publishing and rental of teaching materials and
educational equipment related to games and software, namely, {specify the nature of the services for the publishing and rental of teaching materials and educational equipment related
to games and software, e.g., publication of teaching manuals related to games and software, rental of video games for teaching purposes, rental of game machines and apparatus for teaching
purposes}; entertainment, namely, provision of online, non-downloadable virtual fashion {specify the type of fashion events, e.g., show}
events, including {specify the type of competitions, e.g., video game} competitions, {specify the type of contests, e.g., video
game} contests, {specify the type of games, e.g., video} games, {specify the type of quizzes, e.g., video
game} quizzes, {specify the type of exhibitions, e.g., exhibitions for entertainment purposes}, sporting
events, {specify the type of shows, e.g., game} shows, {specify the type of performances, e.g., musical} performances,
{specify the type of shows, e.g., game} shows, {specify the type of concerts, e.g., musical}
concerts and theatre productions in the nature of {specify the nature of the theatre productions,
e.g., theatrical performances}; organisation of recreational, sporting and educational events, namely, {specify the type of services for the organisation of
recreational, sporting and educational events, e.g., organization of social entertainment events, organization of cosplay entertainment events, organization of electronic sports
competitions}; entertainment in the form of video and computer games, namely, {specify the type of entertainment in the form of video and computer games, e.g.,
entertainment services in the nature of providing online video games, providing online computer games}; coaching (training) in the field of
amusement and entertainment, namely, {clarify the subject matter of the coaching services, e.g., playing video games, electronic sports}; organisation, production, the
conducting and presentation of entertainment events, namely, {specify the nature of the services for the organisation, production, the conducting and presentation of entertainment
events, e.g., special event planning for social entertainment purposes, organization of social entertainment events, organization of entertainment exhibition events};
{specify the nature of the services for the production and showing of films, videos and audio visual works, including in the form of a so-called video blog or vlog, including via the
Internet, on appropriate websites, blogs and social media, e.g.,
production and showing of films, video production services, on-line journals in the nature of blogs featuring [indicate field or subject matter]
}; production of audio visual content, namely, {specify the nature of the services for the production of audio visual content, e.g., production of audio recording, video production}; entertainment services, namely, providing electronic online games and online video games; publishing, producing and renting out image and sound recordings, namely, {specify the nature of the services for the publishing, producing and renting out image and sound recordings, e.g., Digital video, audio, and multimedia publishing services, Video production, Production of audio recording, Rental of video tapes and motion pictures}; publishing, editing and lending of film, music and print works, including by electronic means, namely, {specify the nature of the services for publishing, editing and lending of film, music and print works, including by electronic means, e.g., production of films, rental of films, film editing, publication and editing of printed matter, music publishing services}; organisation, production, the conducting and presentation of talent shows, {specify the type of competitions, e.g., video game} competitions, {specify the type of quizzes, e.g., video game} quizzes, exhibitions for educational or cultural purposes, social {specify the type of social events, e.g., entertainment} events for relaxation, educational events in the nature of {specify the type educational events, e.g., workshops in the field of video games}, recreational events in the nature of {specify the type of recreational events, e.g., on-line computer games}, sporting events, entertainment events in the nature of {specify the nature of the entertainment events, e.g., live music concerts}, {specify the type of shows, e.g., theatrical} shows, live {specify the type of live performances, e.g., show} performances, and concerts, the aforementioned events also with spectator participation; production of audio, audio visual, film, video and television {specify the nature of the television recordings, e.g., show} recordings; teaching in the field of {indicate specific field, e.g. music, remedial reading}; sports services, namely, {specify the type of sports services, e.g., sports training services, providing sports information, conducting of sports competitions}; information and consultancy services in relation to the aforementioned services; publication of magazines and books in electronic form; {specify the nature of the online publication of electronic books and magazines (non-downloadable), e.g., providing online non-downloadable electronic publications in the nature of books and magazines in the field of [indicate subject matter of the publications], publication of electronic books and magazines}; online library services, namely, {clarify the nature of the services for making available electronic libraries of newspapers, magazines, photographs and prints via an online computer network, e.g., providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network}; provision of entertainment via a global communication network in the form of online games and websites containing a wide range of entertainment information of a general nature in the field of feature films, television show programmes, music videos, related film clips, photographs and other multimedia material, namely, {specify the nature of the services for the provision of entertainment via a global communication network, e.g., providing online computer games, providing online video games, provision of non-downloadable films and movies via a video-on-demand service, providing online non-downloadable videos in the field of [indicate field or subject matter of videos]}
Identification advisories
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Requirement: Applicant's e
mail address
Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
Requirement: U.S.-licensed attorney
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §2.11(a); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as outside of the United States or its territories. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.