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: 12/19/2013

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS:

 

Applicant is advised that the Office’s database of registered and pending marks has been searched, and no conflicting marks that would bar registration under Trademark Act Section 2(d) have been found. TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES WHICH APPLICANT MUST ADDRESS:

• ACCEPTABLE IDENTIFICATION OF SERVICES REQUIRED
• MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

ACCEPTABLE IDENTIFICATION OF SERVICES REQUIRED:

 

- THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SPECIFIED SERVICES

 

The identification of services “promoting the goods and services of others by providing a website featuring … online catalogs” in International Class 35 is indefinite and must be amended to specify what the catalogs feature, e.g., “clothing, shoes, cosmetics.” See TMEP §1402.01. Alternatively, applicant may specify the catalogs feature “a wide variety of consumer goods of others,” if accurate.

 

The identification of services “providing assistance to advertisers in creating, managing, optimizing, and organizing online advertising and online product listings” in International Class 35 is indefinite and must be clarified because the nature of the services is unclear and because it could include services in other international classes, such as search engine optimization services in Class 42. See TMEP §§1402.01, 1402.03.  Further, applicant must specify the type of assistance provided, such as commercial assistance, assistance in management of business activities, or operational business assistance.

 

The remainder of the wording in International Class 35 is acceptable as submitted.    

 

Applicant may substitute the following wording, if accurate (with additions shown in bold italics):

 

CLASS 35:      On-line retail store services featuring consumer goods of others; advertising and promoting the goods and services of others via a global computer network; promoting the goods and services of others by providing a website featuring coupons, offers, rebates, reward cards, consumer reviews, links to the retail websites of others, online catalogs featuring a wide variety of consumer goods of others, comparison shopping, and discount information; providing commercial assistance to advertisers in creating, managing, optimizing, and organizing online advertising and online product listings

 

CLASS 42:      Providing search engine optimization services to advertisers

 

For further assistance with identifying and classifying the services, 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.

 

Advisory – Identification May Not Be Broadened in Scope

 

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.

 

MULTIPLE–CLASS APPLICATION REQUIREMENTS:

 

The application identifies services that are broad enough to be classified in at least two classes; however, the fee submitted is sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to one international class, or (2) submit the fees for the additional class(es).

 

If applicant chooses to add one or more additional international classes to this application, applicant must comply with each of the following requirements for those international classes based on use in commerce under Section 1(a):

 

(1)       LIST SERVICES BY INTERNATIONAL CLASS:  Applicant must list the services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of services not covered by the fee already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(3)       SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of services, applicant must also submit the following:

 

(a)       DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

 

(b)       SPECIMEN:  One specimen showing the mark in use in commerce for each international class of services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. 

 

(c)       STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.”

 

(d)       VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the requirement in 3(b) above for a specimen for each international class of services, the specimen of record is acceptable for International Class 35 only.  Applicant must submit additional specimens if any other international classes are added to the application. 

 

HOW TO RESPOND:

 

Applicant should file a response online via the Trademark Electronic Application System (TEAS), using the “Response to Examining Attorney Office Action Form” available at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

If applicant requires technical assistance in using the online response form, please email TEAS@uspto.gov.

 

If applicant has questions about this Office action, please e-mail or telephone the assigned trademark examining attorney.

 

 

 

/Kristin Carlson/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

Tel: 571-272-2240

kristin.carlson@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/19/2013 FOR U.S. APPLICATION SERIAL NO. 86116485

 

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 12/19/2013 (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.