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: 4/20/2016

 

 

THIS IS A FINAL ACTION.

 

 

 

             A.       Compliance with Office Requirements

 

 

This Office action is in response to applicant’s communication filed on March 24, 2016.

 

Classes 036, 038, 041, 042 and 045 are acceptable as written.

 

 

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 and made final.  §§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; third-party recruiting of qualified and credentialed 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 their business affairs; providing an online network of business and industry research experts in the nature of consultation; arranging for clients and those experts to perform business and industry business consultations, custom surveys and other consulting projects between the 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; consultations, surveys and consulting projects in the field of business; recruitment and placement of board positions, senior and C-level employees 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; administration of online membership programs providing business counseling and business 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; Facilitating, namely promoting online collaboration between members within the scientific, research and medical communities to achieve advances in the field of healthcare; promoting collaboration within the scientific, research and medical communities to achieve advances in the field of healthcare; Online business services to members, namely, healthcare business 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 business reports and surveys

 

The wording “research, surveys and consultation” 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 define if these are business services.

 

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; third-party recruiting of qualified and credentialed 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 their business affairs; providing an online network of business and industry research experts in the nature of {business} consultation; arranging for clients and those experts to perform business and industry business consultations, custom [business} surveys and other {business} consulting projects between the 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; consultations, surveys and consulting projects in the field of business; recruitment and placement of board positions, senior and C-level employees 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; administration of online membership programs providing business counseling and business 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; Facilitating, namely promoting online collaboration between members within the scientific, research and medical communities to achieve advances in the field of healthcare; {please define these services in this class}; promoting collaboration within the scientific, research and medical communities to achieve advances in the field of healthcare; {please define these services in this class};Online business services to members, namely, healthcare business 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 {market} research information services in the nature of providing an online computer database of industry sector business reports and surveys

 

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.            Options for response

 

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:    37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

Class 035: ; providing an online network of business and industry research experts in the nature of consultation; arranging for clients and those experts to perform business and industry business consultations, custom surveys and other consulting projects between the 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; Facilitating, namely promoting online collaboration between members within the scientific, research and medical communities to achieve advances in the field of healthcare; promoting collaboration within the scientific, research and medical communities to achieve advances in the field of healthcare; medical and healthcare research information services in the nature of providing an online computer database of industry sector business reports and surveys

 

 

The application will then proceed for the following services and classes: 

 

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; third-party recruiting of qualified and credentialed 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 their business affairs; consultations, surveys and consulting projects in the field of business; recruitment and placement of board positions, senior and C-level employees 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; administration of online membership programs providing business counseling and business 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; Online business services to members, namely, healthcare business 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

 

Class 036: Acceptable as written

 

Class 038: Acceptable as written

 

Class 041: Acceptable as written

 

Class 042: Acceptable as written

 

Class 045: Acceptable as written

 

 

 

 

Applicant may respond by providing one or both of the following:

 

(1)        A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)        An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

 

/William Rossman/

/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 4/20/2016 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 4/20/2016 (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.