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: 2/8/2018

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on November 30, 2017.  Applicant amended the identification of goods and services.  However, some of the identification remains indefinite.  Accordingly, the requirement for a definite Identification of Goods and Services is now made FINAL for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01; 37 C.F.R. §2.63(b).

 

 

Identification of Goods and Service – FINAL – partial

 

This final requirement applies to the following services only:

 

Class 035:  business administration and consultation services, namely, providing proxy voting distribution, management and processing services, notice and access services, document hosting services, paper, internet and telephone voting services, e-consent services, real-time online reporting services, over vote protection services, and shareholder survey services;

 

Class 041:  Providing educational classes, seminars,  tools, and training services in the field of corporate governance, proxy voting, corporate action, reorganization, prospectuses, summary prospectuses, and offering memoranda and distribution of course and training materials in connection therewith to enable investors to learn, understand, and increase their knowledge on such matters; providing educational courses and tools online accessible via internet in the field of corporate governance, proxy voting, corporate action, reorganization, prospectuses, summary prospectuses, offering memoranda and distribution of course and training materials in connection therewith to enable investors to learn, understand, and increase their knowledge on such matters

 

The wording referenced above in Class 35 is unclear and the services could refer to services in several classes.  For example, internet and telephone voting services could be a Class 38 service. Applicant must further specify the nature of the services.  Additionally, the wording “tools” in Class 041 is also indefinite.  Applicant must specify the nature of the tools or delete the wording from the services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The following amended wording is suggested, if accurate:

 

Class 035: Business consultancy services; business management consultancy; business organization consultancy; business administration services; business administration consultancy; business organization, management and administration consultancy;  business administration and consultation services, namely, providing proxy voting distribution, management, processing and reporting services; business administration services, namely, providing a website featuring notice services, namely, posting proxy and annual meeting materials, providing notice (delete access) preference managements, allowing shareholders to request full set copies, and providing notice to shareholders of the electronic accessibility of those materials so that they can vote their shares; Business administration services, namely, providing proxy voting ballots to shareholders, either electronically or via postal mail, and collecting, storing and tabulating shareholder votes, whether sent by mail, entered online, or voted via interactive voice response over the telephone; Business management and administration services, namely, maintaining electronic consent preferences from shareholders with daily e-consent reporting; Business management and administration services, namely, SEC-compliant over vote protection service to eliminate the possibility of submitting over votes for banks and brokers; Business management and administration services, namely, shareholder survey services; business administration services, namely, providing a website featuring business information related to document hosting services, namely, hosting a public company's annual report, proxy statement and investor communications materials in a format made easy for reading and searching online and providing a link to download as a PDF for future reference and printing; business administration and consultation services, namely, providing business analysis and information to shareholders in the field of vote collections, tabulations and reports from and to banks, brokers, transfer agents and issuers to improve shareholder communications; business administration and consultation, namely, providing voting distribution, management, and processing services; business administration and consultation, namely, processing, managing, collecting, tabulating, and reporting votes; management consulting and advisory services in the areas of corporate strategy, voting 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 prospectuses, summary prospectuses and business documentation to enable investors to learn, understand, and increase their knowledge on such matters

 

Class 041: Providing educational classes, seminars and training services in the field of corporate governance, proxy voting, corporate action, reorganization, prospectuses, summary prospectuses, and offering memoranda and distribution of course and training materials in connection therewith 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, corporate action, reorganization, prospectuses, summary prospectuses, offering memoranda and distribution of course and training materials in connection therewith to enable investors to learn, understand, and increase their knowledge on such matters; shareholder communication services in the nature of online non-downloadable customized voting templates and vote tabulation reports

 

 

Classes 9, 16, 39 and 42 are acceptable as is.

 

Guidelines to 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.

 

 

This requirement is FINAL.

 

 

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.  

 

Proper Response to Final Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  Class 035:  business administration and consultation services, namely, providing proxy voting distribution, management and processing services, notice and access services, document hosting services, paper, internet and telephone voting services, e-consent services, real-time online reporting services, over vote protection services, and shareholder survey services;

 

Class 041:  Providing tools in the field of corporate governance, proxy voting, corporate action, reorganization, prospectuses, summary prospectuses, and offering memoranda and distribution of course and training materials in connection therewith to enable investors to learn, understand, and increase their knowledge on such matters; providing tools online accessible via internet in the field of corporate governance, proxy voting, corporate action, reorganization, prospectuses, summary prospectuses, offering memoranda and distribution of course and training materials in connection therewith to enable investors to learn, understand, and increase their knowledge on such matters.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for Classes 8, 16, 39, 42 and the following services in Class 41:  “Providing educational classes, seminars and training services in the field of corporate governance, proxy voting, corporate action, reorganization, prospectuses, summary prospectuses, and offering memoranda and distribution of course and training materials in connection therewith 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, corporate action, reorganization, prospectuses, summary prospectuses, offering memoranda and distribution of course and training materials in connection therewith to enable investors to learn, understand, and increase their knowledge on such matters; shareholder communication services in the nature of online non-downloadable customized voting templates and vote tabulation reports” and the following services in Class 35:  “Business consultancy services; business management consultancy; business organization consultancy; business administration services; business administration consultancy; business organization, management and administration consultancy; business administration and consultation services, namely, providing business analysis and information to shareholders in the field of vote collections, tabulations and reports from and to banks, brokers, transfer agents and issuers to improve shareholder communications; business administration and consultation, namely, providing voting distribution, management, and processing services; business administration and consultation, namely, processing, managing, collecting, tabulating, and reporting votes; management consulting and advisory services in the areas of corporate strategy, voting 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 prospectuses, summary prospectuses and business documentation to enable investors to learn, understand, and increase their knowledge on such matters”.

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

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 2/8/2018 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 2/8/2018 (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.