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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 8/31/2018

 

This application was approved for publication and the applied-for mark scheduled to publish in the USPTO’s Official Gazette.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

Identification of Goods and Services

The identification of goods and services is indefinite and must be clarified as specified below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

As written, the wording “electronic retrieval of data, documents, text, video and files for the purposes of market research; electronic retrieval of computer technical information for the purposes of market research” is not clearly justified in Class 35. Electronic retrieval of information and searching of information services are not generally classified by purpose, and are typically in the nature of Class 42 computer technology services. See, for example: 042-1039 042 Searching and retrieving information, sites, and other resources available on computer networks for others A 06/28/2007. Please clarify the nature of the services.

 

The wording “management of business information relating to customer loyalty, incentive and reward programs” is indefinite in that the nature of “management of business information” is unclear and is broad enough to include services such as Class 42 electronic storage of business information. Please amend to specify the common commercial names of the services.

 

The wording “provision of non-downloadable information, data, graphics, sound, music, videos, animation and text in the fields of advertising” is indefinite and inclusive of services in multiple classes. For example, provision of non-downloadable graphics, music and videos is generally classified in Class 41 as an entertainment service, regardless of subject matter. Please review this wording in its entirety, clarify, and reclassify as applicable.

 

The wording “consultancy, information, management and advisory services relating to all the aforesaid services” is indefinite and possibly misclassified as to “management services relating to all the aforesaid services,” as the nature of the management is unclear and is inclusive of management services in classes other than Class 35. Please clarify and reclassify as applicable.  

 

The applicant may adopt the following wording if accurate:

 

Class 9

Accepted as amended.

 

 

Class 35

Corporate business management services; corporate business management services relating to accommodation strategy, space management, relocation management, lease management, occupancy cost management for offices, retail shops, residential and industrial premises; corporate management consultancy services; business and hotel management and administration; marketing and promotion services; publication of publicity materials; marketing of vacant premises; advertising and promotion services and information services relating thereto; business information services; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; The following bracketed language is reclassified to international class 42 as discussed above.{ electronic retrieval of data, documents, text, video and files for the purposes of market research; electronic retrieval of computer technical information for the purposes of market research}; providing computerized business information and data for the purposes of market research; business, advertising and promotional information services in the nature of business administration of consumer loyalty programs, provision of advertising services for others; organization, operation and supervision of customer loyalty, reward and incentive schemes in the nature of business administration of consumer loyalty programs; arranging and management of commercial operations for building customer loyalty, reward and incentive in particular with the provision of customer loyalty cards in the nature of promoting the goods and services of others by means of the issuance of loyalty rewards cards; issuance of loyalty, reward and incentive cards; promotional services in the nature of organization, operation, management and supervision of loyalty, reward and incentive schemes in the nature of providing incentive award programs for customers and employees through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty; promotion in connection with reward and/or customer loyalty and incentive schemes in the nature of promoting the goods and services of others by means of the issuance of loyalty rewards cards; promotional services in the nature of management and administration of customer loyalty and incentive programs in the nature of promoting the goods and services of others by means of the issuance of loyalty rewards cards; promotional services in the nature of organization, operation, management and supervision of sales promotional incentive, reward and loyalty schemes in the nature of promoting the goods and services of others by means of the issuance of loyalty rewards cards; promotional information and advisory services provided to members and to subscribers of incentive, reward and loyalty schemes and customer advisory services relating to the provision of information pertaining to account balances and transaction details thereof; provision of customer loyalty, incentive and reward programs; management, supervision and promotional services relating to customer loyalty, incentive and reward programs; promoting the sale or provision of the goods or services of third parties through customer loyalty, incentive and reward programs; tracking, compilation and business information management relating to customer loyalty, incentive and reward programs; telephone answering service for unavailable subscribers; telephone answering for others; auctioneering provided on the Internet; personnel management; provision of sales, business, advertising and promotional information through a global computer network; presentation of goods on communication media for retail purposes in the nature of product demonstration; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise internet web site and an online wholesale outlet store in the field of modems, telephones, telephone and Internet cables and wires, and telecommunications equipment; retail store and wholesale store services in the field of telephones, electronic and telecommunications goods, computer hardware and computer software, batteries, battery chargers, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, precious metals, jewelry, precious stones, printed matter, stationery and magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, textiles, clothing, footwear, headgear, cars, carpets, rugs, games and electronic toys, paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, candles, pharmaceutical and sanitary preparations, ironmongery and small items of metal hardware, cutlery, razors and hand tools, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, spectacles and sun glasses, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, silverware, horological and chronometric instruments, musical instruments, magazine, cards, paper and cardboard products, picture, typewriters and office requisites, leather and imitations of leather and goods made from these materials, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, coat hangers, place mats, dressmaker's articles, bed and table covers, playthings and sporting articles, foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non- alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers' articles and matches; retail store services in the field of foods and household utensils; direct mail advertising; hotel management services for others; ordering services for others in the nature of telephone, facsimile and mail order services featuring television, radio, satellite, Internet, and other telecommunications services, namely, arranging telecommunications subscription for others; provision of business information via the Internet; secretarial services; statistical information; organization of exhibitions for commercial or advertising purposes; business services relating to compilation and rental of mailing lists, namely, preparing mailing lists; business investigation; business administration services for the processing of sales made on the Internet; sales promotion for others, procurement services for others in the nature of purchasing goods and services for other businesses; sales promotion by means of issuance and adjustment of trading stamps; referral services and personal placement, namely, referrals in the field of modelling, television and movie industry; import-export clearance agencies, namely, import-export agencies; agency for newspapers subscriptions; document reproduction; operation of electronic calculators, typewriters, teletext machines, and related office machines, namely, providing office functions; transcription including stencil-paper writing, namely, stenographic transcription; rental and leasing of typewriters, copy machines and word processors; employment information; rental and leasing of vending machines; business management of sporting facilities for others; customer relationship management; business management services relating to electronic commerce; accounting; registration services for credit cards, charge cards, cash cards, cheque guarantee cards, debit cards, payment cards, financial cards and purchase cards; advertising and promotion services in the field of entertainment, music, motion pictures, television, cable television, satellite television, radio and on-line broadcasting; business advisory services relating to intellectual property; film advertising; information services relating to opinion polls; layout services for advertising purposes; art gallery services; gallery services relating to fine art work; copy writing services; consultancy, information and advisory services relating to all the aforesaid services; provision of non-downloadable information, data, graphics, sound, music, videos, animation and text in the fields of advertising {the foregoing wording is too broad and indefinite the nature of the services the applicant intends are not clear and fail to identify class 35 advertising services. The applicant must revise the language and identify specific services within the scope by common commercial name}.

 

Class 38

Accepted as amended.

 

Class 41

Accepted as amended.

 

Class 42

 

Computer service, namely, creating indexes of information, websites and resources on computer networks; computer programming; computer systems integration services; creating and maintaining websites of others, namely, design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining web sites of others; hosting web sites of others; installation, maintenance and repair of computer software and computer programs, updating of computer software, computer services relating to recovery of computer data, computer software design; design and engineering design services relating to telecommunications systems and apparatus; testing of computing, telecommunication, electrical and electronic apparatus and instruments; computer systems analysis; computer database development; rental and leasing of computers, computer apparatus, computer software and computer data processing equipment; computer services in the nature of design of telecommunications apparatus and equipment enabling home shopping services provided from the Internet; computer and electronic signal coding and decoding; design and development of computer hardware; design of computer databases and electronic data record formats; technical support, namely, software maintenance services and troubleshooting of software problems; design of computer software and hardware for use in telecommunications and voice over Internet protocol applications, data transmission and instant messaging services; design and development of computer systems, software and network; design of network and communications apparatus; network systems analysis and design; providing temporary use of online, non-downloadable computer software that allows subscribers to utilize VOIP communication, virtual community and social networking services; design of computer software and hardware for use in web-based online systems for booking satellite capacity and for the automated remote-control of satellite transmission equipment; technical advisory and consulting services relating to operation of computers; monitoring of apparatus for recording, transmission or reproduction of sound or images for the transmission, distribution and broadcasting of information, data, graphics, sound, music, videos, animation and text, via satellite systems or computer networks; technical support, namely, monitoring technological functions of data processing equipment, computer hardware, telecommunication apparatus, digital point of sale material and electronic signage; cloud computing consultation services; meteorological information; architecture; surveying; geological survey, research and prospecting; testing, screening and research of pharmaceutical, cosmetics and food; research for building construction and city planning; testing and research for prevention of pollution; testing and research on electricity; civil engineering testing and research; testing, inspection and research for agriculture, livestock breeding and marine product industries; rental and leasing of computer fixing equipment; rental and leasing of ultrasonic diagnostic equipment other than for medical purposes; technical consultancy and advisory services relating to energy conservation; energy auditing; environmental design services, namely, layout design services for interior and exterior environments; technical consulting in the field of environmental conservation and management; testing and evaluation of occupational health and safety; architectural and interior design services; interior designs of buildings, offices and apartments; application service provider services featuring software for providing communication services for uploading, posting, displaying, sharing or otherwise providing communication means for exchange of electronic media over the Internet; application software monitoring and hosting services; creation of on-line social network sites; hosting social network sites; cloud computing services, namely, providing computer services to enable downloading and uploading data; cloud computing services, namely, providing computer services for storing data and computer software; brand design; design of animation and comics; design of digital art images for commercial use; digitalizing video and/or audio media into electronic format; image digitization; providing Internet search engines; electronic storage of data, documents, text, video and files; electronic storage of computer technical information; storage of computerized business information and data; leasing of electronic equipment and data processing and storage apparatus for the purpose of electronic storage of data and information; computer consultancy and technology consultancy in the field of telecommunications technology consultancy, information and advisory services relating to the aforesaid services; {the following language has been reclassified from International class 35{ Providing computer searching services, namely, electronic retrieval of data, documents, text, video and files for the purposes of market research; Providing computer searching services, namely, electronic retrieval of computer technical information for the purposes of market research}.

 

 

Class 45

Accepted as amended.

 

 

An applicant may only amend an identification to clarify or limit the goods or services, but not to add to or broaden the scope of the goods and services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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. §§2.62(c), 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.

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

 

 

/Elizabeth N. Kajubi/

Examining Attorney

Law Office 107

(571) 272-2727

elizabeth.kajubi@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.