UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

NON-FINAL 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: 8/25/2017

 

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.

 

Summary of Issues:

• Section 2(d) Refusal to Register – Likelihood of Confusion
• Potential Refusal – Potential Section 2(d) Refusal to Register
• Recitation of Services Requirement

 

1.  Refusal – Section 2(d) Refusal to Register – Likelihood of Confusion:

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2382596, 3653171, 4479909, and 5094673.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Comparison of the Marks:

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

The applicant’s mark is ODYSSEY.  The mark in U.S. Registration Number 2382596 is ODYSSEY.  The mark in U.S. Registration Number 3653171 is ODYSSEY AVIATION.  The mark in U.S. Registration Number 4479909 is ODYSSEY plus design.  The mark in U.S. Registration Number 509473 is MEDITERRANEAN ODYSSEY.  The applicant’s mark is highly similar to the registrants’ marks because they all include the identical word ODYSSEY.

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Because the applicant’s mark and the registrants’ marks all include the identical wording ODYSSEY, the marks are confusingly similar.

 

Comparison of the Goods/Services:

The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

As to U.S. Registration Number 2382596:

The applicant’s goods/services, for purposes of this refusal are, “providing a transportation management system in the field of transportation of freight and goods for others.”  The registrant’s goods are, “vehicle navigation software and supporting documentation, namely, user manuals, sold as unit for automated mapping, navigation and directions to destinations”.  The applicant’s goods/services are related to the registrant’s goods because the applicant’s goods/services are written broadly enough to encompass the registrant’s goods.

 

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant’s more narrow identification.

 

Accordingly, because the applicant’s mark and the registrant’s mark are confusingly similar, and the applicant’s goods/services are written broadly enough to encompass the registrant’s goods, confusion as to source is likely and registration is refused under Section 2(d).

 

As to U.S. Registration Numbers 3653171 and 5094673:

The applicant’s goods/services are, “Freight logistics, transportation management services and business management services, namely, managing logistics, reverse logistics, arranging of transportation, supply chain services, supply chain visibility and synchronization, supply and demand forecasting, and product distribution processes for others; shipment processing, preparing shipment documents and invoices, tracking documents, packages, and freight over computer networks, intranets, and the internet for business purposes for others; business consulting services related to product distribution, operations management services, logistics, reverse logistics, supply chain, and production systems and distribution solutions for others; warehouse management services; packaging and/or repackaging, transport, delivery and storage of goods; providing tracking services and information concerning tracking of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers for business inventory purposes; carrier procurement, management, and selection services; order fulfillment services” and “Global transportation and arranging of global transportation of freight for others by all available means; freight forwarding; freight transportation brokerage; supply chain logistics; managed logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others; providing a transportation management system in the field of transportation of freight and goods for others”.

 

The registrant’s services in U.S. Registration Number 3653171 include, “storage of aircraft”.  The registrant’s services in U.S. Registration Number 5094673 include, “transport of goods”.  The applicant’s goods/services are related to the registrants’ services because the applicant’s services are written broadly enough to encompass the registrant’s services.  Specifically, the applicant’s “storage of goods” is written broadly enough to encompass “storage of aircraft”, and both the applicant and registrant in U.S. Registration Number 5094673 include “transport of goods”.  With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant’s more narrow identification.

 

Additionally, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely, delivery of goods, freight transportation brokerage, arranging the transportation of goods, packaging of goods, order fulfillment services, freight forwarding, storage of goods, global transportation of freight for others by all available means, providing tracking services and information concerning tracking of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers, business consulting services, and transport of goods are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).

 

Accordingly, because the applicant’s mark and the registrants’ marks are confusingly similar, and the applicant’s goods/services are written broadly enough to encompass the registrants’ services, confusion as to source is likely and registration is refused under Section 2(d).

 

As to U.S. Registration Number 4479909:

The applicant’s goods/services are, “Freight logistics, transportation management services and business management services, namely, managing logistics, reverse logistics, arranging of transportation, supply chain services, supply chain visibility and synchronization, supply and demand forecasting, and product distribution processes for others; shipment processing, preparing shipment documents and invoices, tracking documents, packages, and freight over computer networks, intranets, and the internet for business purposes for others; business consulting services related to product distribution, operations management services, logistics, reverse logistics, supply chain, and production systems and distribution solutions for others; warehouse management services; packaging and/or repackaging, transport, delivery and storage of goods; providing tracking services and information concerning tracking of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers for business inventory purposes; carrier procurement, management, and selection services; order fulfillment services” and “Global transportation and arranging of global transportation of freight for others by all available means; freight forwarding; freight transportation brokerage; supply chain logistics; managed logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others; providing a transportation management system in the field of transportation of freight and goods for others”.

 

The registrant’s services are, “Business records management; records management services, namely, document indexing for others; business management services related to the development and implementation of business process management and workflow automation”.

 

The applicant’s goods/services are related to the registrant’s services because these types of goods/services travel through the same channels of trade to the same classes of purchasers.  The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely, business consulting services, order fulfillment services, managing logistics, reverse logistics, delivery of goods, transport of goods, packaging of goods, freight forwarding, storage of goods and records management are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).

 

Accordingly, because the applicant’s mark and the registrant’s mark are confusingly similar, and the goods/services are closely related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

2.  Potential Refusal – Potential Section 2(d) Refusal to Register:

The filing date of pending U.S. Application Serial No. 87340988 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant must respond to the requirement(s) set forth below.

 

3.  Requirement – Recitation of Services:

A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(2)  and 1051(b)(2); 37 C.F.R. §2.32(a)(6).  To "specify" means to name in an explicit manner.  The identification should set forth common names, using terminology that is generally understood.  The identification of goods and/or services must be specific, definite, clear, accurate, and concise.   See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986) , rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966) ; California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).  TMEP §1402.01.

 

As to International Class 035:

The wording “Freight logistics, transportation management services and business management services, namely, managing logistics, reverse logistics, arranging of transportation, supply chain services, supply chain visibility and synchronization, supply and demand forecasting, and product distribution processes for others” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “arranging of transportation” is unclear.  Applicant may state, “arranging the transportation of goods for others” if accurate.

 

The wording “warehouse management services” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may state, “warehouse business management services” if accurate.

 

The wording “packaging and/or repackaging of goods” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Generally, the terminology “and/or” and “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.  See TMEP §1402.03(a). 

 

For example, “modems and/or computer monitors” could refer to “modems or computer monitors” and is unclear which goods applicant intends to identify.  Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.  Additionally, please note that “packaging and repackaging articles for transport” is a service that is properly classified in International Class 039.  Please  clarify the services for the record and classify appropriately.

 

Applicant has classified “transport, delivery and storage of goods” in International Class 035; however, the proper classification is International Class 039.  Therefore, applicant may respond by (1) moving these services into International Class 039 in the application, or (2) deleting transport, delivery and storage of goods” from the application.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

The wording “carrier procurement, management, and selection services” in the identification of services is indefinite and must be clarified because it is unclear what services the applicant is providing.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please identify the services by common commercial or generic name and classify appropriately.

 

As to International Class 039:

The wording “Global transportation and arranging of global transportation of freight for others by all available means” in the identification of services is overly broad and includes services classified in International Classes 039 and 035.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “global transportation of freight for others by all available means” is properly classified in International Class 039, however, “arranging of global transportation of freight for others by all available means” is properly classified in International Class 035.

 

The wording “supply chain logistics” in the identification of services is indefinite and must be clarified because it could include services classified in more than one International Class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For properly classification in International Class 039, applicant may state, “supply chain logistics, namely, storage, transportation, and delivery of goods for others by air, rail, ship or truck”, if accurate.

 

The wording “providing a transportation management system in the field of transportation of freight and goods for others” in the identification of services is indefinite and must be clarified because it is unclear what goods/services the applicant is providing.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please identify the goods/services by common commercial or generic name and classify appropriately.  Please note that if the applicant is providing a system comprised of goods, applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 009:

Transportation management system comprised of computer software for dispatching of ground transportation in the field of transportation of freight and goods for others.

 

International Class 035:

Freight logistics, transportation management services and business management services, namely, managing logistics, reverse logistics, arranging the transportation of goods for others, supply chain services, supply chain visibility and synchronization, supply and demand forecasting, and product distribution processes for others; shipment processing, preparing shipment documents and invoices, tracking documents, packages, and freight over computer networks, intranets, and the internet for business purposes for others; business consulting services related to product distribution, operations management services, logistics, reverse logistics, supply chain, and production systems and distribution solutions for others; warehouse business management services; providing tracking services and information concerning tracking of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers for business inventory purposes; carrier procurement, management, and selection services, namely, {please identify the services by common commercial or generic name}; order fulfillment services; arranging of global transportation of freight for others by all available means.

 

International Class 039:

Global transportation of freight for others by all available means; freight forwarding; freight transportation brokerage; supply chain logistics, namely, storage, transportation, and delivery of goods for others by air, rail, ship or truck; managed logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others; Packaging and repackaging articles for transport; transport, delivery and storage of goods.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Requirements for a Multiple Class Application:

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(s) 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 three classes; however, applicant submitted a fee(s) sufficient for only two class(es).  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 class(es) 035 and 039; and applicant needs a specimen for class 009 if applicant chooses to add class 009 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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

4.  Advisory – 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.  

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. 

 

5.  Advisory – Assistance:

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.

 

/Colleen Dombrow/

Trademark Attorney

Law Office 101

Direct Dial: 571-272-8262

Facsimile: 571-273-9101

colleen.dombrow@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 8/25/2017 FOR U.S. APPLICATION SERIAL NO. 87456586

 

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 8/25/2017 (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.