UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

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: 8/31/2011

 

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.

 

SEARCH

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

 

IDENTIFICATION

 

International Class 35

 

Applicant applied for the following wording in International Class 35: Online and internet information, advisory, strategy, consulting, business research and planning services relating to publicity and marketing communications for businesses. Collecting data relating to statistical analysis, search engine analysis, web traffic analysis and reporting and using the information and data to promote the goods and services of others and to provide search engine marketing services. Providing consultation services and recommendations to optimize internet and web advertising and internet traffic or other electronic media, and to assist businesses with their reputation management.

 

Online and internet information, advisory, strategy, consulting, business research and planning services relating to publicity and marketing communications for businesses – this wording is indefinite and appears to encompass several overlapping services.   Furthermore, “information services” are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” in International Class 35; “providing information regarding financing and insuring an automobile” in International Class 36; and “providing information regarding the repair and maintenance of automobiles” in International Class 37. Therefore, to enable proper classification and examination of the application, applicant must specify the subject matter of the “information services.”  Applicant may change this wording to, if accurate: 

 

Business consulting, inquiries or information; Business consulting, inquiries or information provided online; Consultancy and advisory services in the field of business strategy; Business consultation services; business research and planning services relating to publicity and marketing communications for businesses - in International Class 35

 

Collecting data relating to statistical analysis, search engine analysis, web traffic analysis and reporting and using the information and data to promote the goods and services of others and to provide search engine marketing services – this wording is indefinite.  The applicant must further amend the services to list them by common commercial name for notice purposes.  Applicant may change this wording to, if accurate:

 

Collection and compilation of information into computer databases in the field of statistical analysis, search engine analysis, web traffic analysis and reporting; Promoting the goods and services of others via a global computer network; Promoting the goods and services of others through search engine referral traffic analysis and reporting - in International Class 35

 

Providing consultation services and recommendations to optimize internet and web advertising and internet traffic or other electronic media, and to assist businesses with their reputation management – The wording is indefinite for the reasons explained above. Generally, the terminology “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.  See TMEP §1402.03(a).  For example, in “modems or monitors,” applicant could amend the identification to “modems” alone, or “monitors” alone, or “modems and monitors” if applicable.  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language.  Applicant may change this wording to, if accurate:

 

Branding services, namely, consulting, development, management and marketing of brands for businesses, namely providing recommendations to optimize internet and web advertising, internet traffic and uses other electronic media - in International Class 35

 

International Class 42

 

The identification is acceptable in International Class 42.

 

Identification Manual

 

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.

 

Indefinite Terms

 

Moreover, each identification must be specific and all-inclusive; therefore, applicant should refrain from using open-ended wording such as “including” or “and the like” and replace this wording with "namely" followed by the respective goods or services listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).   The identification must be specific and all-inclusive.

 

Amending Identification/Broadening Scope

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and 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 et seq.

 

PLEASE NOTE:

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/C. Skye Young/

Trademark Examining Attorney

Law Office 117

Ph: (571) 272-9713

Fx: (571) 273-9117

Em: skye.young@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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 8/31/2011 FOR

SERIAL NO. 85318035

 

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 8/31/2011 (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.