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: 10/13/2017

 

 

This application was approved for publication on August 30, 2017.  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  However, approval of the application has been withdrawn to address the issue(s) below.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.

 

 

SUMMARY OF ISSUES

• Classification of Services (Partial Requirement)
• Multiple-Class Application Requirement (if applicable)

 

 

CLASSIFICATION OF SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Applicant’s identification of services in class 41 provides for:

 

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 business and personal development and leadership development; 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, business and personal development and leadership development; 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 in the nature of articles in the field of business and personal development and leadership development; 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 the designing of training courses in the field of business and personal development and leadership development; 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, arranging gatherings for the discussion of issues in the field of business and personal development and leadership development

 

The wording “provision of educational information in the field of business and personal development and leadership development” and “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” are misclassified and, in part, indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  Classification of educational information services is based on the subject matter of the information provided rather than the intention that the information provided be educational.  See TMEP §1402.11(b).  For example, “providing educational information in the field of finance” is classified in International Class 36, “providing educational information in the field of travel” is classified in International Class 39, “providing information relating to education services” is classified in International Class 41, and “providing a website featuring educational information in the field of medicine” is classified in International Class 44. 

 

Here, educational information in the field of business should be in class 35, and educational information in the field of personal development should be in class 45.  The wording educational information in the field of “leadership development” is indefinite and must be further specified as to the type of leadership development (e.g., business leadership development, which is in class 35).

 

Please note, if applicant includes additional classes in response to this requirement, applicant must also comply with the multiple-class application requirements provided herein.

 

Applicant may adopt the following identification in the following International Classes, if accurate: 

 

Class 35: Administration of consumer loyalty programs which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization and administration services for the supply of benefits for customer loyalty and frequent buyer schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization, operation and supervision of customer loyalty schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; 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, matching potential customers with suitable educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; 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; provision of educational information in the field of business and business leadership development; provision of educational information online from a computer database and on the global communications network in the field of business and business leadership development

 

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 business and personal development and leadership development; 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, business and personal development and leadership development; 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 in the nature of articles in the field of business and personal development and leadership development; 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 the designing of training courses in the field of business and personal development and leadership development; 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, arranging gatherings for the discussion of issues in the field of business and personal development and leadership development

 

Class 45 (new class): Provision of educational information in the field of personal development; provision of educational information online from a computer database and on the global communications network in the field of personal development

 

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 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).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es).  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 for the full list of applicant’s goods and/or services, 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 such 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, the following services will be deleted from the application: 

• “provision of educational information in the field of business and personal development and leadership development” and
• “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”

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

The application will then proceed with the following services only: 

 

Class 35: Administration of consumer loyalty programs which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization and administration services for the supply of benefits for customer loyalty and frequent buyer schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization, operation and supervision of customer loyalty schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; 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, matching potential customers with suitable educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; 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 business and personal development and leadership development; training services 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, business and personal development and leadership development; 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 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 in the nature of articles in the field of business and personal development and leadership development; 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 the designing of training courses in the field of business and personal development and leadership development; 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, arranging gatherings for the discussion of issues in the field of business and personal development and leadership development

 

 See TMEP §718.02(a).  In such case, an applicant may timely file a petition to revive the abandoned services, which, if granted, would allow for the reinsertion of these services into the application.  See 37 C.F.R. §2.66; TMEP §§718.02(a), 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 10/13/2017 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 10/13/2017 (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.