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: 5/31/2017

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

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).

 

 

Identification of Goods and Services

 

Some of the wording in the identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.    Applicant must specify the goods and services with more particularity.  See below for more details.  In addition, the wording “including” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services.  See TMEP §1402.03(a).

 

In particular, in Class 009, applicant must provide greater specificity with regard to, “voting platforms”, “prospectus”, “summary prospectus”, and “proxy solicitation”, in the phrase, “Downloadable electronic data files and databases, namely, business forms, financial forms, voting platforms, and vote collection, tabulation and reporting forms in the field of corporate governance, prospectus, summary prospectus, proxy solicitation, investor relations, and corporate affairs.”  For example, “prospectus”, “summary prospectus”, and “proxy solicitation” are not recognized fields of use as “corporate governance”, “investor relations” and “corporate affairs” are.  In addition, Applicant must provide greater specificity with regard to, “downloadable electronic publications, namely, shareholder communications and investor relations communications in the field of corporate governance, prospectus, summary prospectus, proxy solicitation, investor relations, and corporate affairs”, and “downloadable electronic educational materials in the field of proxy voting, corporate action and reorganization, prospectus, summary prospectus, and other offering documentation.”  Please note that the identification must be all inclusive.  Wording such as, “and other offering documentation” is neither a definite filed of use nor specific educational material

 

In Class 016, applicant must provide greater specificity with regard to, “voting platforms”, “prospectus”, “summary prospectus”, “proxy solicitation”, “printed shareholder communications and investor relations communications in the field of corporate governance, prospectus, summary prospectus, proxy solicitation, investor relations, and corporate affairs”, “printed educational materials in the field … prospectus, summary prospectus, and other offering documentation.”

 

In Class 035, applicant must provide greater specificity with regard to, “business administration and consultation services, namely, providing shareholder communication services”, “business administration and consultation services, namely, providing shareholder communication services, including, customized electronic and print based voting platforms, electronic and printed vote collection, tabulation and reporting, and delivery of electronic and printed investor relations communications, documents and education for banks, brokers, transfer agents and issuers”, “business administration and consultation, namely, providing voting management and processing services, including, customized electronic and print based voting platforms, electronic and printed vote collection, tabulation and reporting”, “financial and monetary affairs, namely, providing corporate action and reorganization services” and “providing investor relations and strategic communications services.”  Please note that clauses that serve to explain otherwise definite identifications must also be definite and within the same international class as the definite clause it serves to explain.

 

In Class 041, applicant must provide greater specificity with regard to, “education” in the phrase, “providing education and training services in the field of corporate governance, proxy voting and corporate action and reorganization services to enable investors to learn, understand, and increase their knowledge on such matters.”  In addition, Applicant must provide greater specificity with regard to, “Providing educational information online in the field of proxy voting, corporate action and reorganization services prospectus, summary prospectus, and other offering documentation services to enable investors to learn, understand, and increase their knowledge on such matters.”  Please note that all information is educational in nature.  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.

 

In Class 042, applicant must provide greater specificity with regard to, “providing a website featuring technology that facilitates shareholders' electronic communication for the purpose of improving corporate governance oversight”, “providing on-line non-downloadable software that facilitates shareholders' electronic communication for the purpose of improving corporate governance oversight”, and “providing temporary use of on-line, non-downloadable software for providing an interactive guide to investors in the field of prospectus, summary prospectus and financial documentation services to enable investors to learn, understand, and increase their knowledge on such matters.”

 

 

Applicant may substitute the following wording, if accurate: 

 

Class 009:  Downloadable electronic data files and databases, namely, business forms, financial forms, voting template forms, prospectuses, and vote collection, tabulation and reporting forms in the field of corporate governance, investor relations, and corporate affairs; downloadable electronic publications, namely, shareholder communication reports, prospectuses, proxy solicitation forms and investor relations communication bulletins in the field of corporate governance, investor relations, and corporate affairs; downloadable electronic educational course materials in the field of proxy voting, corporate action and reorganization, and prospectus drafting; Shareholder communication services in the nature of downloadable customized voting templates and vote tabulation reports {from Class 35}

 

Class 016:  Printed business forms, financial forms, voting template forms, vote collection, tabulation and reporting forms, prospectuses, summary prospectuses and proxy solicitation forms in the field of corporate governance, investor relations, and corporate affairs; printed summary reports containing shareholder communications and investor relations communications, prospectus, summary prospectus, proxy solicitation forms in the field of corporate governance, investor relations, and corporate affairs; printed educational materials in the field of proxy voting, corporate action and reorganization, prospectus drafting, summary prospectus drafting, and ____ {specify with particularity the other documentation, e.g. investor communications}

 

Class 035: Business consultancy services; business management consultancy; business organization consultancy; business administration services; business administration consultancy; business organization, management and administration consultancy; Retail store and online retail store services featuring electronic and printed investor relations communication forms, documents and educational materials for banks, brokers, transfer agents and issuers;  Business administration and consultation, namely, processing and managing votes; Management consulting and advisory services in the areas of corporate strategy and reorganization; Business consulting and advisory services in the field of corporate governance, proxy solicitation, shareholder communications, and investor relations;  Investor relations, namely, assisting companies with the strategy and content of their communications with investors; Providing online educational information in the fields of proxy voting, corporate action and reorganization and evaluation and analysis of business prospectus, summary prospectuses and business documentation to enable investors to learn, understand, and increase their knowledge on such matters [moved and clarified from class 41]

 

Class 036:  Financial and monetary affairs, namely, analyzing the costs and benefits of corporate action and reorganization [moved and clarified from Class 35].

 

Class 039:  Delivery of goods for others, namely, electronic and printed investor relations communications forms, documents and educational materials for banks, brokers, transfer agents and issuers [moved from Class 35].

 

Class 041: Providing educational classes, seminars and training services in the field of corporate governance, proxy voting and corporate action and reorganization services to enable investors to learn, understand, and increase their knowledge on such matters; providing educational courses online accessible via internet in the field of corporate governance, proxy voting and corporate action and reorganization services to enable investors to learn, understand, and increase their knowledge on such matters; providing online information about education in the fields of proxy voting, corporate action and reorganization, evaluation and analysis of prospectuses, summary prospectus, and other business documentation to enable investors to learn, understand, and increase their knowledge on such matters [Note:  This is information for providers of educational services]; Shareholder communication services in the nature of online non-downloadable customized voting templates and vote tabulation reports;

 

Class 042: Providing a website featuring technology that [specify the functions or tasks that the technology enables, e.g. provides shareholders’ with the ability to access databases, enter access and synthesized information and generate reports, allows shareholders to upload, download and share information] for the purpose of improving corporate governance oversight; providing on-line non-downloadable software that enables shareholders' to electronically communicate with management and other shareholders for the purpose of improving corporate governance oversight; Providing temporary use of on-line, non-downloadable software to investors featuring [specify the active function of the software, e.g. an interactive guide that analyzes and reformats data in prospectuses, summary prospectuses and financial documentation] for learning, understanding and increasing investor knowledge on such matters]; Providing a secured-access, members only website featuring technology that gives registered company stock holders, management and affiliates the ability to communicate and share data for the purposes of improving business relations [moved and clarified from class 35’s “Business administration and consultation services, namely, providing shareholder communication services”]; Providing a website featuring technology that enables users to vote on corporate and business initiatives [moved and clarified from class 35]; Providing a website featuring technology that enables companies to communicate with their investor community for investor relations [moved and clarified from class 35.

 

Guidelines for Amending the Identification of Goods and/or Services

 

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 Applications

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 7 classes; however, applicant submitted a fee sufficient for only 5 classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for classes 9, 16, 35, 36, 41 and 42; and applicant needs a specimen for class 39 if applicant adds the class to the application.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

Advisory:  Information for TEAS Plus and TEAS RF Applicants

 

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.  

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

/Kathleen Lorenzo/

Trademark Examining Attorney

Law Office 109

(571) 272-5883

kathleen.lorenzo@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 5/31/2017 FOR U.S. APPLICATION SERIAL NO. 87351228

 

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 5/31/2017 (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.