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: 1/4/2013

 

This non-final Office action is a response to applicant’s communication filed December 30, 2012.

 

STATUS

 

In a suspension letter dated December 20, 2012, the examining attorney suspended action on the application pending the final disposition of U.S. Application No. 85547617.  In its response, applicant amended the identification of services and argued that prior pending application should not be cited against applicant’s mark based on the revised identification of services.  The amendment to the identification of services is unacceptable and therefore raises the following new issue.

 

IDENTIFICATION OF SERVICES

 

The proposed amendment to the identification cannot be accepted because it refers to services that are not within the scope of the identification that was set forth in the application at the time of filing.  See 37 C.F.R. §2.71(a). 

 

The amendment identifies the following services:  “On-line journals, namely, blogs featuring various subjects and forms of entertainment in the fields of bicycles, brand concept and brand development, creative services, clothing, bags, restaurant and bar services, alcoholic beverages, and lifestyle products and stories regarding the foregoing; Providing a website featuring various subjects and forms of entertainment in the fields of bicycles, brand concept and brand development, creative services, clothing, bags, restaurant and bar services, alcoholic beverages, and lifestyle products and stories regarding the foregoing.”  This wording is beyond the scope of the original wording because the original subject matter of the information services was limited to “entertainment information.”  The amended identification not only fails to identify “information services,” but includes subject matter that is not considered “entertainment,” most of which would be classified in other service classes.  For instance, a website featuring information on brand concepts and brand development would be classified in Class 35 while providing information about restaurant and bar services is a Class 43 service.  Information about bicycles, clothing, bags, alcoholic products and lifestyle products all appear to be consumer information services, which are Class 35 business-related services and not Class 41 entertainment-related services; even if the “clothing” and “bag” services were in the nature of information in the field of fashion, that would be a Class 45 service.  “Creative services” is vague, but if it refers to creative marketing design services or some similar service, it would be considered a Class 35 service. 

 

While an applicant may clarify or limit the identification of goods and/or services, adding to or broadening the scope is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording should be deleted from the identification.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

Applicant may adopt the following identification, if accurate: 

 

“On-line journals, namely, blogs featuring various subjects and forms of entertainment in the fields of bicycles, brand concept and brand development, creative services, clothing, bags, restaurant and bar services, alcoholic beverages, and lifestyle products and stories regarding the foregoing; providing a website featuring entertainment information in the field of bicycling,” in International Class 41.

 

An applicant may amend an identification of services only 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 et seq.

 

For assistance with identifying and classifying goods and 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 NOTE:  Following applicant’s response to this Office action, action on this application will be suspended pending the final disposition of U.S. Application No. 85547617.

 

QUESTIONS

 

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 §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the requirements 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.

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

John.Gartner@uspto.gov (informal correspondence)

 

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/4/2013 FOR U.S. APPLICATION SERIAL NO. 85729183

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 1/4/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.