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: 7/2/2015

 

 

 

.           A.            Compliance with Office Requirements

 

 

This Office action is in response to applicant’s communication filed on June 5, 201.

 

Applicant has attempted in good faith to submit a definite identification of goods. However, some of the wording still appears indefinite and possibly misclassified. The requirement for an amended identification is thus maintained. §§1402.01 and 1402.03

 

 

             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; a network of experts and information associated with those experts and deploying those experts in consultations with clients in order to help clients in the management of the business affairs; 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; 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

 

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; {human resource] recruiting qualified and credentialed third-party experts for others; a network of experts and information; associated with those experts and deploying those experts in consultations with clients in order to help clients in the management of the business affairs {please  define network in this class}; providing a network of business and industry research experts {in the nature of business consultation}; arranging for direct consultations, custom surveys and other consulting projects between investment and business leaders and a network of expert advisors and industry professionals 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 the consultation, surveys and consulting project in this class with common definite wording}; {Employee] 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 {business] 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

 

·         Class 036: Acceptable as written

 

 

·         International Class 038: Providing social media platforms such as Facebook, Twitter, LinkedIn and YouTube 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

 

The wording “Facebook, Twitter, LinkedIn and YouTube” in the identification of services is a registered mark not owned by applicant. See enclosed copy of U.S. Registration No(s). 3814888, 3619911, 4023236 and 3714120.  An applicant may not use a registered mark owned by another party in the identification.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

 

Therefore, applicant must amend the identification of services to delete the wording “Facebook, Twitter, LinkedIn and YouTube” and substitute the common commercial or generic name of the services.

 

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

 

International Class 038: Providing social media platforms  {please define these services as platforms are usually software and not in class 038} such as Facebook, Twitter, LinkedIn and YouTube 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;  {the applicant cannot use the trademark of other in their own identification thus Facebook, Twitter, LinkedIn and YouTube must be removed} 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 {over the internet}

 

 

·         International Class 041: Mentorship programs, advice and counseling programs for the purpose of educating and providing training 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 in order to provide mentorship, advice, and counsel to strengthen and improve leadership and decision making; 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 in order to provide mentorship, advice, and counsel to strengthen and improve leadership and decision making

 

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

 

International Class 041: Mentorship programs, advice and counseling {namely educational} mentoring for the purpose of educating and providing training {in the field of} nonprofit organizations and social entrepreneurs; providing educational resources, namely, workshops and seminars in the fields of career development and leadership training; providing {educational] counseling and mentorship programs {namely, mentoring to students} in the fields of career development, business development, licensing and research and development in order to provide mentorship, advice, and counsel to strengthen and improve leadership and decision making; 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 in order to provide mentorship, advice, and counsel to strengthen and improve leadership and decision making {please define these programs in this class as these services do not appear to be in class 041}

 

 

·         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

 

The wording “research and reference 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.

 

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 {please define the field and the research}

 

 

·         International Class 044:  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; facilitating online collaboration between members within the scientific, research and medical communities to achieve advances in the field of healthcare

 

The wording “business services and health care research” 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 may adopt the following identification of goods/services, if accurate:    See TMEP §1402.01.

 

International Class 044: Online business services to members, namely, healthcare research consulting {please define the se services as business services are in class 035 and healthcare research would be in class 042} 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;

 

Facilitating online collaboration between members within the scientific, research and medical communities to achieve advances in the field of healthcare e.g. {Promoting collaboration within the scientific, research and medical communities to achieve advances in the field of healthcare} (this can be moved to class 035}

 

045: Acceptable as written

 

 

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.

 

 

 

/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 7/2/2015 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 7/2/2015 (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.