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: 12/10/2014

 

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.

 

 

            A.        No Conflicting Marks Found

 

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).

 

 

 

             B.       Identification of Goods/Services

 

 

·         International Class 035: Online business services to members, namely, providing business research consultation services for the business community in the nature of providing direct consultation and marketing surveys; online business services to members, namely, business research information services in the nature of providing a database of industry sector business reports and surveys; recruiting qualified and credentialed third-party experts for others; providing a platform for expert consultations, custom surveys and other consulting projects to investment and business leaders in specialized industry sectors, namely, maintaining and building a network of experts and information associated with those experts and deploying those experts in consultations with clients; providing a network of business and industry research experts, arranging for direct consultations, custom surveys and other consulting projects between investment and business leaders and a network of expert advisors and industry professionals all (of the above) for use in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; online business services to members, namely, healthcare research consulting services provided by a network of expert advisors and industry professionals in the field of healthcare, namely, doctors, scientists, allied healthcare professionals and other experts and participants in the healthcare and biomedical industries; medical and healthcare research information services in the nature of providing an online computer database of industry sector reports and surveys; online business services to members promoting collaboration within the scientific, research and medical communities to achieve advances in the field of healthcare; recruitment and placement of key personnel in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; online business services to members, namely, business consultation services for nonprofit organizations and social entrepreneurs; online business services to members, namely, business research information services for nonprofit organizations and social entrepreneurs; online business services to members, namely, providing expert business research services related to hiring, compensation, management and operations; online business services to members, namely, providing expert business consulting services related to hiring, compensation, management and operations; online business services to members, namely, providing business counseling in the field of international social entrepreneurship; consulting services related to business advisory in the field of international social entrepreneurship; promoting public awareness in the field of international social entrepreneurship; online membership programs providing counseling and advisory services to members; business consulting services, namely, administrative support in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; business consulting services, namely, planning, management, supervision and strategic support of engagements in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs

 

 

Part of the wording indicated below in the identification of services must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.

 

 

 

 

Applicant must specify the common commercial or generic name for the goods/services.  If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods/services, if accurate:    See TMEP §1402.01.

 

International Class 035: Online business services to members, namely, providing business research consultation services for the business community in the nature of providing direct consultation and marketing surveys; online business services to members, namely, business research information services in the nature of providing a database of industry sector business reports and surveys; recruiting qualified and credentialed third-party experts for others; providing a platform for expert consultations, custom surveys and other consulting projects to investment and business leaders in specialized industry sectors, namely, maintaining and building a network of experts and information associated with those experts and deploying those experts in consultations with clients; {please define as building networks and platforms are not services listed in class 035}providing a network of business and industry research experts, arranging for direct consultations, custom surveys and other consulting projects between investment and business leaders and a network of expert advisors and industry professionals all (of the above) for use in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; {please define as providing a network is not services listed in class 035}; online business services to members, namely, healthcare research consulting services provided by a network of expert advisors and industry professionals in the field of healthcare, namely, doctors, scientists, allied healthcare professionals and other experts and participants in the healthcare and biomedical industries; {health care research consulting would be listed in class 044 not 035 unless it is consumer marketing research); medical and healthcare research information services in the nature of providing an online computer database of industry sector reports and surveys; online business services to members promoting collaboration within the scientific, research and medical communities to achieve advances in the field of healthcare; {please define the business services in common terms); recruitment and placement of key personnel in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs;  online business services to members, namely, business consultation services for nonprofit organizations and social entrepreneurs; online business services to members, namely, business research information services for nonprofit organizations and social entrepreneurs; online business services to members, namely, providing expert business research services related to hiring, compensation, management and operations; online business services to members, namely, providing expert business consulting services related to hiring, compensation, management and operations; online business services to members, namely, providing business counseling in the field of international social entrepreneurship; consulting services related to business advisory in the field of international social entrepreneurship;  promoting public awareness in the field of international social entrepreneurship; online membership programs providing counseling and advisory services to members; business consulting services, namely, administrative support in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; business consulting services, namely, planning, management, supervision and strategic support of engagements in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs

 

 

 

·         International Class 036: Research information services for the investment management community, research services for the investment management community in the nature of providing a database of industry sector reports and surveys; research information services for the business community, research services for the business community in the nature of providing a database of industry sector financial reports and financial survey information; financial research for the business community, financial research information services for the business community in the nature of providing a database of industry sector financial reports and financial surveys; financial research consultation services for the business community in the nature of providing direct consultation to a network of expert advisors and industry professionals all for use in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs

 

The wording “RESEARCH INFORMATION SERVICES” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. For example, business research is in class 035.

 

Applicant must specify the common commercial or generic name for the goods/services.  If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods/services, if accurate:    See TMEP §1402.01.

 

International Class 036: {financial} research information services for the investment management community, research services for the investment management community in the nature of providing a database of industry sector reports and surveys; {Financial} research information services for the business community, {Financial} research services for the business community in the nature of providing a database of industry sector financial reports and financial survey information; financial research for the business community, financial research information services for the business community in the nature of providing a database of industry sector financial reports and financial surveys; financial research consultation services for the business community in the nature of providing direct consultation to a network of expert advisors and industry professionals all for use in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs

 

 

·         International Class 038: Providing social media platforms to members for online discussion of information in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; Transmission of news in the nature of providing current event news and current event information in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs via social media platforms; providing on-line chat rooms and electronic bulletin boards for exchange of information among users in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; providing on-line chat rooms for social networking

 

The wording “Providing social media platforms to members” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.

 

Applicant must specify the common commercial or generic name for the goods/services.  If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods/services, if accurate:    See TMEP §1402.01.

 

International Class 038: Providing social media platforms to members for online discussion of information in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; (please define the platforms in this class as social media may be in different classes e.g. Providing a website that displays rankings of {specify type of rankings, e.g., the popularity of social happenings, restaurants and nightlife} based on social media for entertainment purposes is in class 041); Transmission of news in the nature of providing current event news and current event information in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs via social media platforms; providing on-line chat rooms and electronic bulletin boards for exchange of information among users in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; providing on-line chat rooms for social networking

 

 

·         International Class 041: Mentorship programs, advice and counseling programs for nonprofit organizations and social entrepreneurs; providing educational resources, namely, workshops and seminars in the fields of career development and leadership training; providing counseling and mentorship programs in the fields of career development, business development, licensing and research and development; educational services, namely, the presentation of seminars, lectures, and roundtables in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; online membership programs providing education services to members

 

The wording “Mentorship programs, advice and counseling programs” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.

 

Applicant must specify the common commercial or generic name for the goods/services.  If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods/services, if accurate:    See TMEP §1402.01.

 

International Class 041: Mentorship programs, advice and counseling programs for nonprofit organizations and social entrepreneurs; {please further define these services in class 041) providing educational resources, namely, workshops and seminars in the fields of career development and leadership training; providing counseling and mentorship programs in the fields of career development, business development, licensing and research and development; {please further define these services in class 041); educational services, namely, the presentation of seminars, lectures, and roundtables in the fields of technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; online membership programs providing education services to members {please define the type of educational services and the field}

 

 

·         International Class 042: Computer services, namely, hosting on-line web facilities for organization of meetings, interactive discussions, seminars, working groups, research groups, presentations and networking events; computer services, namely, hosting on-line web facilities for others via membership-based platforms for business education, mentorship opportunities, leadership training, research consultation for businesses through direct consultation including discussion of surveys in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; Providing online research and reference services via an on-line computer network by experts

 

The wording “hosting on-line web facilities” in the identification of goods must be clarified because it is indefinite.  See TMEP §§1402.01, 1402.03. The wording should indicate this services is for others.

 

Applicant must specify the common commercial or generic name for the goods/services.  If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods/services, if accurate:    See TMEP §1402.01.

 

International Class 042: Computer services, namely, hosting on-line web facilities for {others} for organization of meetings, interactive discussions, seminars, working groups, research groups, presentations and networking events; computer services, namely, hosting on-line web facilities for others via membership-based platforms for business education, mentorship opportunities, leadership training, research consultation for businesses through direct consultation including discussion of surveys in specialized industry sectors, namely, technology, media and telecom, healthcare and biomedical, energy and industrials, consumer goods and services, financial and business services, real estate, accounting and legal, economic and regulatory affairs; Providing online research and reference services via an on-line computer network by experts

 

 

·         International Class 045: Expert witness identification services

 

The wording “Expert witness identification services” in the identification of goods must be clarified because it is indefinite.  See TMEP §§1402.01, 1402.03. The wording should indicate this services is for legal matters

 

Applicant must specify the common commercial or generic name for the goods/services.  If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods/services, if accurate:    See TMEP §1402.01.

 

International Class 045: Expert witness identification services {please define e.g. Expert witness services in legal matters in the field of {indicate specific field of expertise}

 

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

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.

 

 

 

             C.       Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

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.

 

 

 

 

/William Rossman/

EXAMINING ATTORNEY

LAW OFFICE 109

PHONE: 571-272-9029

EMAIL: william.rossman@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 12/10/2014 FOR U.S. APPLICATION SERIAL NO. 86368981

 

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 12/10/2014 (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.