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: 12/20/2011

 

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, 2.65(a); TMEP §§711, 718.03.

 

Search of Office Records for Conflicting Marks

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

Summary of Issues

            1.  Identification of the Services in International Class 41.

 

Identification of the Services – International Class 41

NOTE: The identification of the goods in International Classes 9 and 16 are acceptable as submitted.  The requirement for an acceptable identification applies only to the services in International Class 41.

 

The applicant has applied for the mark THE SIX HUMAN NEEDS for “educational services, namely, conducting classes and seminars in the fields of personal improvement and psychological testing; providing online publications in the fields of personal improvement and psychological testing” in International Class 41.

 

The wording “educational services, namely, conducting classes and seminars in the fields of personal improvement and psychological testing” is acceptable as submitted.

 

However, the wording “providing online publications in the fields of personal improvement and psychological testing” in the identification of services is indefinite and must be clarified.  See TMEP §§1402.01, 1402.03.  Specifically, the applicant must provide its type of online publications.  For example, if accurate, the applicant may amend to “providing online publications, namely, e-books in the fields of personal improvement and psychological testing” in International Class 41.

 

Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Applicant may substitute the following wording, if accurate: 

 

“Audio and video recordings in the fields of personal improvement and psychological testing” in International Class 9; (no change)

 

“Printed materials, namely, printed charts and course materials in the fields of personal improvement and psychological testing in International Class 16; (no change)

 

“Educational services, namely, conducting classes and seminars in the fields of personal improvement and psychological testing; providing online publications, namely, e-books in the fields of personal improvement and psychological testing” in International Class 41. 

 

TMEP §§1402.01 and 1402.03.

 

The identification of goods or services should be clear, accurate and as concise as possible.  See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).  Furthermore, the identification of goods and services must be specific and definite.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).

The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules.  When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification.  However, it is the applicant's duty and prerogative to identify the goods and services.   TMEP Section 1402.01(d).

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.

 

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.

Advisory Regarding Response

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 41 will be deleted from the application:  Providing online publications in the fields of personal improvement and psychological testing.  The application will then proceed with the following goods and/or services in International Classes 9, 16 and 41 only:  Audio and video recordings in the fields of personal improvement and psychological testing in International Class 9; printed materials, namely, printed charts and course materials in the fields of personal improvement and psychological testing in International Class 16; educational services, namely, conducting classes and seminars in the fields of personal improvement and psychological testing in International Class 41.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

Telephone Response Suggested

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

 

/Ty Murray/

Attorney Advisor

Law Office 113

571-272-9438

Ty.Murray@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 12/20/2011 FOR

SERIAL NO. 85409449

 

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 12/20/2011 (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.