| To: | Hennenfent, Bradley (paul@reidllaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 86750216 - STAR - N/A |
| Sent: | 6/1/2016 2:26:11 PM |
| Sent As: | ECOM109@USPTO.GOV |
| Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 86750216
MARK: STAR
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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: Hennenfent, Bradley
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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NON-FINAL 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: 6/1/2016
This Office action is in response to applicant’s communication filed on May 10, 2016. The proposed amended Recitation of Services is (a) unacceptable as outside the scope of the original recitation of services and (b) unacceptable as indefinite. This raises a “new” issue necessitating this non-final Office Action. The refusal(s) to register under Section 2(d) are maintained and continued. The specimen refusal is maintained and continued, noting that the substitute specimen is additionally unacceptable to show use of the mark on services that would be within the scope of the original recitation of services, namely, they do not show use of the mark in connection with “providing online instruction in the field of medicine”.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
Summary of Issues
The following is a summary of issues:
(1) Particular Wording in the Amendment Exceeds Scope of Services in Original Application
(2) Recitation of Services Indefinite - Clarification Needed
(3) Likelihood of Confusion Refusal(s) - Maintained and Continued
(4) Specimen Refused - Specimen Not Acceptable for Services - Use-based Application
Particular Wording in the Amendment Exceeds Scope of Services in Original Application
In this case, the application originally identified the goods and/or services as follows: “Educational services, namely, providing online instruction in the field of medicine.”
However, the proposed amendment identifies the following goods and/or services: “Education services, namely, providing online instruction in the field of medicine by providing an on-line resource for individuals to organize and analyze patient data.”
The portion of the proposed amendment – underlined and bolded for emphasis - is beyond the scope of the original identification because an “on-line resource for individuals to organize and analyze patient data” is not clearly within the scope of “providing online instruction in the field of medicine”.
“Online instruction” would identify services like on-line classes, seminars, lectures, workshops, etc.
The wording “on-line resource” is also indefinite (addressed in detail below) but as further defined by function “for individuals to organize and analyze patient data” it is not clear that a “online instruction” service is being provided.
“Resources” to “organize and analyze” may or may not be providing “online instruction”. As a specific example it is not clear that the individuals using these resources (regular people, patients, nurses, doctors?) are doing so for an educational purpose. Even that, once further defined, may not be sufficient to keep it within the “scope” of the original ID. The original Recitation of Services was clear and “definite” so the Applicant can only clarify or limit, not expand or introduce new services or functions that are not clearly within the umbrella of the original ID.
The Applicant could delete the “added” language and return to the original ID or may further specify the services such that they are (1) clear and “definite” and (2) within the scope of the original ID. See some suggestions immediately below.
Recitation of Services Indefinite – Clarification Needed
Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade.
The original ID read: “Educational services, namely, providing online instruction in the field of medicine” in Class 41
The proposed amended ID reads: “Education services, namely, providing online instruction in the field of medicine by providing an on-line resource for individuals to organize and analyze patient data” in Class 41.
Specifically,
(1) The additional wording (as written) is an expansion of scope (addressed above), namely, the wording “by providing an on-line resource for individuals to organize and analyze patient data.” The ID must be within the scope of the original ID. The Applicant may either revert back to the original ID or further clarify the ID in such a way that it is within the original ID.
(2) The term “on-line resource” creates an indefiniteness. An “on-line resource” could be “providing on-line non-downloadable software for … [specify function]” in Class 42. To remain in the original “scope” (which is required), the Applicant would have to make clear “how” such an amended ID would be within the scope of what was a clear and definite ID to begin with (may not be an easy task). An “on-line resource” may be “Providing on-line resource guides for ________ [specify subject-matter]” in Class 41. These generally are in the nature of on-line non-downloadable publications. E.g. another example pulled for the ID Manual (see attached) would be “Providing a website featuring resources, namely, non-downloadable publications in the nature of {indicate specific nature of publications, e.g., books, magazines, brochures, etc.} in the field of {indicate subject matter of the publications}” in Class 41. If the Applicant adopted such an ID – it would still clearly need to be within the “scope” of the original ID (not a given).
Applicant may adopt one (1) or more the following identifications, if accurate:
Educational services, namely, providing online instruction in the field of medicine, in Class 41;
Education services, namely, providing online instruction in the field of medicine by providing on-line resources, namely, non-downloadable publications in the nature of ____________{indicate specific nature of publications, e.g., books, magazines, brochures} for individuals to organize and analyze patient data for the purpose of providing on-line medical instruction to ________ [specify e.g. patients, nurses, doctors, medical professionals, accountants], in Class 41.
Note: This second suggestion is an attempt to “craft” an ID that places the proposed amended ID within the scope of the original ID. This is not a simple task. Also, it does not necessarily “match” the specimen of record – and the Examining Attorney would point out and argue that it simply “doesn’t match” the substitute of record.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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. See TMEP §1402.04.
See attached Id listings re: “resources” in Class 41 - for acceptable identifications, level of specificity required and proper classification, as needed.
Likelihood of Confusion Refusal(s) – Maintained and Continued
The refusal(s) to register under Section 2(d) as to Registration Nos. 2738298, 3760649 and 4504422 are maintained and continued.
With an ID that is outside the scope of the original ID and indefinite, the Examining Attorney must revert back to the original ID (to analyze for 2(d) purposes) and the 2(d) refusal(s) must be retained and maintained and continued.
Specimen Refused – Specimen Not Acceptable for Services – Use-based Application
Registration is refused because the substitute specimen does not show the applied-for mark in use in commerce in International Class 41. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). Specifically, the Applicant’s “Star™ Blocks” website shows the mark in connection with a diagnoses tool and/or treatment organizer and may show a “resource” (possibly on-line non-downloadable software – which would be Class 42 services), but – importantly – does not show use of the mark in connection with any services within the scope of the original ID, namely, “online instruction in the field of medicine”. The specimen clearly does not show use of the mark in connection with online classes, workshops, etc. Additionally, use with a “resource” does not show use for “online instruction”. The two services are not connected sufficiently. The specimen helps demonstrate that the additional wording in the ID is outside the scope because the use does not appear to be for any services that are within the original scope.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
The requirement for an acceptable specimen is maintained and continued.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Gina M. Fink/
Trademark Examining Attorney, Law Office 109
Phone: (571) 272-9275
Law Office 109 Fax: (571) 273-9109
gina.fink@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.
