To: | Qatar Foundation for Education, Science ETC. (SGoldsmith@SorinRand.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85955624 - WISH - SR-2216-2 |
Sent: | 9/30/2013 11:17:10 AM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85955624
MARK: WISH
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Qatar Foundation for Education, Science ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 9/30/2013
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the following issues as outlined below:
1) Clarification of Identification of Services Required and
2) Foreign Registration Required.
15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search of the Office Records
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).
1) Clarification of Identification of Services Required
Therefore, applicant must amend the identification to specify the form of delivery of the “education” and the subject matter of these services. The following format is suggested: “education, namely, classes and seminars in the field of __________.” Where applicant has specified the form of delivery of education but not the subject matter, applicant must specify the subject matter. Id.
Also, some of the wording in International Class 41 is indefinite because the exact services cannot be determined. See TMEP §1402.01. Therefore, the example below contains suggestions to clarify so that that the exact nature of the services can be determined.
The following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions so long as they are accurate. If applicant does not adopt a suggestion, then applicant must amend the identification so that it is as specific as the suggestions and language found in the Manual of Acceptable Identifications of Goods and Services.
International Class 41—Education, namely, {applicant must state the form of the education and the subject matter, for example, “classes and seminars in the field of health and nutrition”}; providing of training on {applicant must identified on what topic the training will be, for example, “physical fitness”}; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops; arranging and conducting summits relating to policies concerning the provision and advancement of medical and healthcare services; organization of exhibitions for educational purposes in the field of {specify the subject matter}; publication of electronic books and journals online; teaching of {applicant must specify the subject matter}; practical training in {applicant must specify the subject matter}; provision of information in relation to all aforementioned services, including provision of information on these services via a global computer network; organizing and conducting colloquiums, conferences, congresses, seminars, symposiums and workshops, educational forums and lectures in the field of public health, public health investment, health and wellness education, and prevention and treatment of medical conditions, and public health {changed spelling from “heath” to “health”} services, and public policies and legislation regarding all of the aforementioned {as currently worded, it is unclear whether the wording following “in the field of” are meant to the subject matter of the services or if applicant intends to provide separate services; if applicant is providing colloquiums, conferences, congresses, seminars, symposiums, workshops, educational forums and lectures covering all the topics listed, the following is suggested: “organizing and conducting colloquiums, conferences, congresses, seminars, symposiums, workshops, educational forums and lectures in the field of public health, public health investment, health and wellness education, prevention and treatment of medical conditions, public health services, and public policies and legislation regarding all of the aforementioned”}, and provision of information regarding all of the aforementioned
International Class 44—Consultancy services relating to healthcare, surgery, nutrition and personal behaviour; information services relating to healthcare; advisory services relating to healthcare, surgery, nutrition and personal behaviour; medical information services; providing news and information in the fields of medicine, nutrition and healthcare; provision of information relating to medical specialists and practitioners; {applicant must replace the open-ended wording “services that cannot be placed in other classes” with a list of definite services consistent with International Class 44}; provision of information in relation to all these services, including provision of information on these services via a global computer network; providing healthcare information; providing medical information; providing information on government medical and pharmaceutical programs
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
2) Foreign Registration Required
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
Response Guidelines
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.
/Marilyn D. Izzi/
Trademark Examining Attorney
Law Office 112
marilyn.izzi@uspto.gov
P:(571) 270-1523
F:(571) 270-2523
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.