UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 3/30/2018

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

 

On March 28, 2018, the trademark examining attorney and Dusan Clark discussed the issue below. Applicant must respond timely and completely to this issue. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

IDENTIFICATIONS OF SERVICES REQUIRE AMENDMENT

 

The identifications of services require amendment for the reasons indicated below. See generally 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

In International Class 35:

 

• The wording “social entertainment planning for business purposes” refers to two different services. Planning social entertainment events is a service classified in International Class 41 because it is for entertainment purposes; adding “for business purposes” creates an inconsistency.

 

• The wording “direct solicitation services by sales agents in the field of social entertainment events, flower arranging and floral design” is not acceptable because this wording is only acceptable when combined with an indication that wholesale or retail services are being provided. Moreover, it is not clear how sales agents solicit social entertainment events as a wholesale or retail service.

 

• Providing “articles” is too broad as this could include downloadable articles, which are classified in International Class 9. Moreover, all non-downloadable publications such as articles are classified in International Class 41, regardless of subject matter.

 

In International Class 41:

 

• The wording “organizing, arranging and conducting … classes and workshops for social entertainment purposes” is not acceptable because it does not indicate the subject matter of the classes and workshops. Merely indicating that the classes and workshops are “for social entertainment purposes” is not acceptable.

 

• The wording “articles, recipes and tutorials via a website” is not acceptable because (1) it does not indicate the subject matter of the articles and tutorials, (2) the word “articles” is too broad because it includes downloadable articles in International Class 9, and (3) information in the nature of recipes is classified in International Class 43.

 

In International Class 42:

 

• The nature of the website requires further clarification.

 

The following are the suggested formats for the amended identifications of services, which applicant may adopt, if accurate:

 

Class 35: Special event planning for business purposes; retail services through direct solicitation services by sales agents in the field of flower arranging and floral design; providing a website featuring business information and articles promotional and marketing information and materials in the field of special event planning for social entertainment purposes and flower arrangement instruction

 

Class 41: Organizing, arranging and conducting special events for social entertainment purposes and classes and workshops in the field of flower arrangement instruction; consultation in the field of special event planning for social entertainment purposes and flower arrangement instruction; providing social entertainment information, non-downloadable articles in the field of {indicate specific subject matters, e.g., business, flower arranging, floral design}, recipes and tutorials in the field of {indicate specific subject matters, e.g., business, flower arranging, floral design} via a website

 

Class 42: Computer services, namely, providing a website featuring technology that allows users to track party and entertainment event RSVPs and ticket sales

 

Class 43: Providing a website featuring information in the field of recipes

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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 services or add services not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies services that are classified in at least four classes; however, applicant submitted fees sufficient for only three classes. Therefore, if response to the requirement that applicant amend the identifications of services, applicant must either (1) restrict the number of amended identifications to three classes (i.e., the number of classes covered by the fees already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(a):

 

(a)        List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).

 

(b)        Submit a filing fee for each international class not covered by the fees already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). 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.

 

(c)        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.

 

(d)       Submit a specimen for each international class. The current specimens are acceptable for International Classes 35, 41, 42, and 43.  See more information about specimens.

 

(e)        Submit a verified statement that “The specimen was in use in commerce in connection with the 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. §§2.6(a)(1)(iii), 2.23(a), 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.

 

RESPONSE REQUIRED

 

For this application to proceed further, applicant must explicitly address the requirement raised in this Office action by setting forth in writing the required changes. 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.

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response using the “Response to Examining Attorney Office Action” form. 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. All informal communications relevant to this application will be placed in the official application record.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.23(c); TMEP §820.04. However, in certain situations, 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.  

 

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/30/2018 FOR U.S. APPLICATION SERIAL NO. 87717205

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/30/2018 (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.