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: 2/23/2019

 

 

 

This Office action is supplemental to the previous Office action issued on August 10, 2018, in connection with this application.  The trademark examining attorney inadvertently suggested amendments to the identification of goods and services that were indefinite and overly broad.  Additionally, applicant has also made amendments that remain indefinite and overly broad.  Thus, the requirement that applicant amend the identification of goods and services and the requirement that applicant clarify the number of classes for which registration is sought are maintained and continued.  See TMEP §§706, 711.02.  The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.

 

In applicant’s communication dated January 31, 2019, applicant:

 

(1)         Responded to the Trademark Act Section 2(d) refusal.

(2)         Amended the identification of goods and services and added a class.

(3)         Submitted substitute specimens.

 

The examining attorney has reviewed applicant’s response and determined the following:

(1)         Applicant’s arguments and explanation are persuasive.  Thus, the Trademark Act Section 2(d) refusal is withdrawn.  Additionally, the prior-filled pending application has died.  Thus, it no longer poses a bar to registration.

(2)         Applicant’s amended identification of goods and services is unacceptable.  Thus, the relevant requirement is maintained and continued.  Additionally, because applicant’s goods and services remain overly broad and indefinite despite the added class and amendments, the requirement that applicant clarify the number of classes for which registration is sought is maintained and continued.

(3)         The substitute specimens are acceptable and made of record.  Thus, the requirement that applicant submit an acceptable specimen for Class 35 is satisfied.  Applicant should note that if Class 36 is added to this application, an acceptable specimen will be required for that class.

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

SUMMARY OF ISSUES:

• INDEFINITE AND OVERLY BROAD IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED
• CLARIFICATION REQUIRED REGARDING THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT

 

INDEFINITE AND OVERLY BROAD IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

Applicant’s amended identification of goods and services remains indefinite. 

 

The wording “printed materials, namely, mailers in the nature of postcards, brochures, white papers in the field of post-secondary opportunity placements,” “survey fulfillment packages, namely, written surveys and assessments in the field of post-secondary education,” “printed educator questionnaires,” “printed educational instruction sheets for use in assessments in the field of post-secondary education,” “printed postcards and other printed materials,” “providing an on-line database containing information about colleges and graduate schools that is useful to prospective students, their parents, and others,” and “providing educational resources in various fields of post-secondary opportunities, namely, educational assessments services, business training, business planning, and training in the field of professional development through online mediums, namely, mobile phone networks and websites” in the identification of goods and services is indefinite and must be clarified because applicant has not specified the nature of these goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “information services” in the identification of services is indefinite and too broad and must be clarified because the wording does not specify the subject matter of the services and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  Classification of information services is based on the subject matter of the information provided.  TMEP §1402.11(b). 

 

The following are examples of acceptable identifications for information services:  “providing comparison shopping information about automobiles by means of the Internet” is classified in International Class 35, “providing online information regarding financing and insuring an automobile” is classified in International Class 36, “providing an Internet website that features information about automotive maintenance and repair service” is classified in International Class 37, and “providing information in the field of nursing” is classified in International Class 44.

 

To the extent that applicant provides information services related to online higher education resources regarding careers, scholarships, and the military, these services are properly classified in Class 41.  To the extent that applicant provides information related to careers, scholarships, and the military, these services are properly classified in Classes 35, 36, and 45, respectively.

 

Lastly, the wording “including” in the identification of goods and 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 that is not acceptable because it fails to identify specific goods and services.  See TMEP §1402.03(a). 

 

Applicant may adopt the following wording, if accurate:

 

Class 09—       Providing computer software for use on all mediums, namely, mobile electronic devices and computers for use in research, identification and selection of higher education and vocational school choices in the educational and post-secondary education markets; providing computer software for identification and selection of higher education and vocational school choices, namely, school match software for use by individuals seeking post-secondary education opportunities in the nature of enrollment in colleges, selection of college majors, career advice, and scholarships; providing downloadable interactive software to individuals to enable the receipt of surveys and reports based on information that the individuals input where the inputted information is related to student opinions and choices for careers, college majors, scholarships and colleges.

 

Class 16—       Printed materials, namely, mailers in the nature of postcards, brochures, and white papers being printed reports in the field of post-secondary education placement opportunities; survey fulfillment packages, namely, written surveys and assessments in the field of post-secondary education opportunities; printed educator questionnaires regarding post-secondary education opportunities; printed educational instruction sheets for use in assessments in the field of post-secondary education opportunities; printed postcards.

 

Class 35—       Consumer survey services, namely, administering surveys to and collecting information from individuals regarding education and personal and professional development through various printed and digital mediums in the nature of mobile phone networks and websites; providing student enrollment projection information to secondary and post-secondary  educational institutions, educational organizations and companies, academic and employment recruiters and youth service providers based on data collected from individuals; consumer survey services, namely, administering educator questionnaires to collect information pertaining to teaching and educator opinions.

 

Class 36—      Providing an on-line database containing information about scholarship opportunities available to prospective students; providing an on-line computer database with information relating to college scholarships to assist students in finding colleges and universities and completing the application process.

 

Class 41—       Providing educational assessment programs and services; providing information relating to higher education resources related to college preparation, vocational studies, careers, scholarships, college majors, transfer options, military scholarships, athletics, and gap year programs by means of a mobile application and website; providing information over a global computer network in the field of education and post-secondary education opportunities, namely, information related to searching for and selecting a college or graduate school and information related to attending college or graduate school; providing an on-line database containing information about colleges and graduate schools that is useful to prospective students, their parents, and others, namely, information in the field of college admissions, specifically, college selection, completing admissions applications, and preparation for college admission interviews; providing an online database containing information about admissions to specific colleges and graduate schools, information about college majors and degrees offered by specific colleges and graduate schools, and information about student life at specific colleges and graduate schools; providing a website providing information on college selection, campus information and tours, completing admissions applications, preparation for college admission interviews, choosing courses and a major; educational services, namely, providing vocational guidance regarding college majors and careers; providing an on-line computer database with information relating to colleges and universities, college majors, and college career guidance to assist students in finding colleges and universities and completing the application process; providing information relating to education services in the nature of reports, papers and surveys for individuals in the education vertical; providing information relating to higher education resources to individuals about various secondary and post-secondary educational opportunities, namely, providing information about higher education resources related to post-secondary educational institutions, careers, scholarships, college majors, transfer options, the military, athletic options, gap year programs, employers and youth service opportunities; providing educational resources in various fields of post-secondary education opportunities, namely, the provision of educational assessments services, the provision of training in the field of business planning, the provision of business training, and the provision of training in the field of professional development through online mediums in the nature of mobile phone networks and websites; providing on-line computer information about secondary and post-secondary  education placement and higher education resources relating to career choices, college majors, college and scholarship information; providing information relating to education services in the nature of reports to educators, principals, superintendents with information received from student surveys and educator questionnaires.

 

Class 42—       Providing a website featuring on-line non-downloadable interactive software to individuals to enable the receipt of surveys and reports based on information that the individuals input where the inputted information is related to student opinions and choices for careers, college majors, scholarships and colleges.

 

Applicant Cannot Broaden the Scope of the GOODS AND SERVICES – AdVISORY

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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.

CLARIFICATION REQUIRED REGARDING THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT

The application references goods and 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 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 fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and services based on use in commerce that are classified in at least 6 classes; however, applicant submitted a fees 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 specimens are acceptable for Classes 09, 16, 35, 41, and 42; and applicant needs a specimen for Class 36.  See more information about specimens.

 

            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.

 

RESPONDING TO THIS OFFICE ACTION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

 

Jesse Nelman

/JesseNelman/

Examining Attorney

Law Office 113

(571) 272-0191

jesse.nelman@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 2/23/2019 FOR U.S. APPLICATION SERIAL NO. 87883828

 

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 2/23/2019 (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.