Offc Action Outgoing

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:

This Office Action is in response to applicant’s communication filed on October 17, 2013. In an Office Action issued on April 19, 2013, the examining attorney raised the following issues:

Section 2(e)(4) surname refusal
Identification of goods/services unacceptable
Legal entity type clarification

Applicant has provided an acceptable identification of goods and services, and has clarified the legal entity type information. The examining attorney also accepts applicant’s Section 2(f) claim of acquired distinctiveness and withdraws the refusal under Section 2(e)(4). In its Response, applicant removed its Section 1(b) basis from the application for all of its classes. The removal of the Section 1(b) basis in Class 35 has created a new scope issue with the class, as particular wording in the U.S. application appears to be beyond the scope of the wording in the foreign registration. Please see the new issue below.

Identification Exceeds Scope of Foreign Registration – Section 44 Sole Basis – CLASS 35 ONLY

The following wording in the identification of services in the U.S. application is unacceptable because it exceeds the scope of the services in the foreign application or registration: “Compilation and systemization of information into computer databases”.[1] See 37 C.F.R. §2.32(a)(6); TMEP §1012.

Therefore, applicant must satisfy one of the following:

(1) Amend the identification of services in the U.S. application to correspond to the services identified in the foreign application or registration, ensuring that all services beyond the scope of the foreign application or registration are deleted from the U.S. application; or

(2) Delete the Trademark Act Section 44 basis for the services beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those services.

See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).

An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b); TMEP §806.02. If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods and/or services to which that basis applies. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a). If some or all of the goods and/or services are covered by more than one basis, this must also be expressly stated. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).

Although multiple-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods and/or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

Assistance

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 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.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 102

571-272-8844

jordan.baker@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 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.

[1] The examining attorney notes that in its October 17, 2013 Response to Office Action, applicant removed its Section 1(b) filing basis for all of its classes, but left in the wording “(Intent-to-use)” in its Class 35 identification before the specified services that are subject to the above requirement/refusal. Applicant may elect to re-insert its Section 1(b) basis for this wording to resolve the ambiguity.