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: 3/27/2017

 

 

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.

 

 

SEARCH OF OFFICE’S DATABASE OF MARKS: 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).

 

 

SUMMARY OF ISSUES:

• Applicant’s Entity Type – Clarification Required
• Identification of Services – Clarification Required
• Multiple-Class Application Requirements (if applicable)

 

 

APPLICANT’S ENTITY TYPE – Clarification Required

 

Applicant’s business name includes the foreign business designation “LIMITED”; however, applicant set forth “CORPORATION” as the entity type in the application.  This business designation is generally considered the equivalent of a “LIMITED COMPANY” or “LIMITED LIABILITY COMPANY.”  See TMEP app. D.  Therefore, applicant must clarify the entity type in the application.  See TMEP §803.03(i).  Applicant may satisfy this requirement by amending the entity type to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See id. 

 

Alternatively, if applicant maintains that the entity type in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “CORPORATION” in this instance than to the entity types listed in TMEP Appendix D.  See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  TMEP §§1201, 1201.02(b).

 

 

IDENTIFICATION OF SERVICES – Clarification Required

 

The identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In class 35, applicant must clarify the nature of its administration services for the loyalty programs (e.g., explaining the nature of the benefits for customers, etc.), and specify its intermediation services by specifying the classes of people applicant is matching together (e.g., matching of potential private investors with entrepreneurs needing funding, etc.). 

 

In class 41, applicant must specify, where applicable, the field or subject matter for its educational services.  Also, where applicable, applicant should specify the types of publication (e.g., books, newspapers, etc.) and indicate the field or subject matter.  Lastly, with respect to its services for organizing group recreational activities, applicant must clarify the nature of the services (e.g., arranging and conducting guided hiking tours); otherwise, the identification is overly broad such that it may include transportation services in class 39 (e.g., providing transport or for guided tours or excursions, etc.).  If applicant adds any additional classes in response to the requirement to clarify the identification, applicant must also comply with the multiple-class application requirements, which is provided further below.

 

Applicant may adopt the following identification, if accurate: 

 

Class 35: Administration of consumer loyalty programs which provides {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc.}; organization and administration services for the supply of benefits for customer loyalty and frequent buyer schemes which provides {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc.}; organization, operation and supervision of customer loyalty schemes which provides {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc.}; sales promotion through customer loyalty programmes for others; advertising services; rental of advertising time on communication media; business management assistance; providing business information; provision of commercial and business contact information; commercial intermediation services, namely, {specify, e.g., matching of potential private investors with entrepreneurs needing funding; facilitating the channeling of funds between lenders and borrowers by connecting those with a financial surplus with those having a financial deficit, etc.}; conducting market studies; online advertising on a computer network; provision of an online marketplace for buyers and sellers of goods and services; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; providing television home shopping services in the field of general consumer merchandise; publication of publicity texts

Class 41: Providing educational demonstrations; providing educational information in the field of business and personal development and leadership development for the purpose of academic study; teaching in the field of business and personal development and leadership development; educational services, namely, providing classes and instructions in the field of business and personal development and leadership development; arranging and conducting educational conferences, workshops, seminars, symposiums and congresses in the field of {indicate subject matter or field of educational activity}; training services in the field of business and personal development and leadership development; provision of educational information in the field of business and personal development and leadership development; entertainment and educational services in the nature of competitions in the field of entertainment and education, namely, {indicate entertainment or education field, e.g. athletics, spelling, chess, etc.}; educational services, namely, conducting classes, seminars, conferences, workshops in the field of business and personal development and leadership development and distribution of training materials in connection therewith; educational services in the nature of correspondence schools; providing online training courses in the field of business and personal development and leadership development; provision of educational information online from a computer database and on the global communications network in the field of business and personal development and leadership development; provision of instructional services online from a computer database and on the global communications network; publication of news, text, books and journals other than publicity texts by electronic and digital means; providing non-downloadable on-line electronic publications not downloadable the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; publishing digital audio, video and multimedia information online and distributing other than transportation audio records and videos via a global computer network; business training consultancy services; educational consultancy services by analyzing training requirements and designing training courses in the field of {indicate subject matter}; providing online computer games for use network-wide by network users; production, presentation and rental of sound and video recordings; entertainment, cultural and sporting event booking or reservation services provided as part of a customer loyalty or frequent buyer scheme; education services, namely, providing courses and training in the field of business and personal development and leadership development; organization of group recreational activities, namely, {specify, e.g., arranging and conducting guided hiking tours; arranging and conducting guided whale-watching tours; guided outdoor expeditions, etc.}

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS (if applicable)

 

The application potentially identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

 

RESPONSE GUIDELINES

 

For this application to proceed further, 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 specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

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 and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 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. §§2.62(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.  

 

 

 

/Jeane Yoo/

Examining Attorney

Law Office 120

(571) 272-5021

Jeane.Yoo@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 3/27/2017 FOR U.S. APPLICATION SERIAL NO. 87283706

 

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 3/27/2017 (or sooner if specified in the Office action).  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.  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 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.