To: | Yeshiva University (rachelle.dubow@bingham.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86055747 - YU - YESHIV-122 |
Sent: | 12/17/2013 12:15:23 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86055747
MARK: YU
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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: Yeshiva University
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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: 12/17/2013
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.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must respond to the requirement(s) set forth below.
The wording “promoting … athletic contests and exhibitions, lectures, concerts and theater productions” has been classified in International Class 41; however, the proper classification for promotional services is International Class 35. Therefore, applicant must either (1) reclassify these services in the proper international class, or (2) delete the wording “promoting” from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type.
Applicant may adopt the following identification of goods and/or services, if accurate:
CLASSES 09 and 12 are definite
CLASS 16: Blank journals; decals; pens; printed materials, namely, books, periodicals, magazines, and newsletters in the field of {specify subject matter}; printed materials, namely, newspapers
CLASS 18: Tote bags, messenger bags, backpacks [COMPUTER BAGS DELETED]
CLASSES 21, 24, 25, and 28 are definite
CLASS 35: Online retail bookstore and variety store services featuring a wide variety of consumer goods; promoting the exhibitions, lectures, concerts and theater productions of others
CLASS 41: Educational services, namely, providing courses of instruction at the high school and postgraduate levels and distributing course material in connection therewith; providing online seminars of instruction at the high school, graduate, postgraduate and professional levels; libraries; online academic library services; entertainment services, namely, organizing and conducting athletic contests, concerts and theater productions; entertainment services, namely, organizing and conducting exhibitions for entertainment purposes; entertainment services, namely, organizing and conducting lectures in the field of {specify}; providing museum services; non-downloadable electronic publications, namely, articles, newsletters, newspapers and magazines in the fields of education, alumni relations and student life
CLASS 44: Counseling services in the fields of mental health, psychiatric medication management, namely, {specify the nature of the services, e.g., preparation and dispensing of medications}, medical crisis management, namely, {specify the nature of the services, e.g., emergency medical assistance} and emergency medical services; health center services, namely, {specify the nature of the services, e.g., health care services provided in a health center}
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.
The following claim of ownership is suggested:
Applicant is the owner of U.S. Registration Nos. 3766703, 2686392, 2930309 AND OTHERS.
CONTACT INFORMATION
/Christine Martin/
Examining Attorney
Law Office 104
(571) 272-1630
christine.martin@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.