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: 10/15/2018

 

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

 

SUMMARY OF ISSUES:

·        Trademark Act Section 2(d) Refusal – Likelihood of Confusion

·        Foreign Registration Certificate Requirement

·        Identification of Services Requirement

·        English Translation Statement Requirement

 

TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark WERK in U.S. Registration No. 5550212, mark 39 WORKS in U.S. Registration No. 4734399, mark 39 WORKS in U.S. Registration No. 4953831, mark 39WORKS in U.S. Registration No. 4737776, and mark 39WORKS in U.S. Registration No. 4953832.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant seeks to register the standard character mark WERK_39 for “Business networking services; Business services relating to the arrangement of joint ventures; Market analysis; Providing business management support for start-up companies and other businesses” in International Class 35; “Providing financing to start-up and emerging companies” in International Class 36, “Providing instructional seminars;, namely, for educational purposes; Providing workshops for training purposes; Conducting courses, seminars and workshops; Providing training courses, conferences, exhibitions and competitions; Career counseling and coaching; Coaching in economic and management matters” in International Class 41, and “Development and implementation of computer programs; Development and implementation of computer software for project management; Software engineering; Software design and development; Computer programming; Development and implementation of programs for data processing; Development and testing of software; Programming of software for information platforms on the Internet; Development of data bases” in International Class 42.

 

Registrant’s mark WERK is a standard character mark registered for “Pattern printing; Printing of patterns on textiles; Prototype fabrication of new products for others” in International Class 40, and “Teaching in the field of pattern making and clothing manufacturing; Providing on-line training courses, seminars, workshops in the field of pattern making and clothing manufacturing; Providing facilities for pattern making and clothing manufacturing training” in International Class 41.

 

The same entity owns the registrations below:

#	Mark	U.S. Reg. No.	Class	Goods and Services
1	39 WORKS (design plus words)	4734399	9	computer game software
			42	computer software consultancy; computer programming; quality control for others in the field of information technology; consumer product safety testing and consultation in the field of information technology; information technology consultancy
2	39 WORKS (design plus words)	4953831	35	Business development services, namely, providing start-up support for businesses of others; business support services, namely, business consulting to freelancers, start-ups, existing businesses and non-profit organizations; incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits; management services, namely on-line business development services, namely, providing start-up support for businesses of others
			36	Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits; incubation services, namely, rental of office space to freelancers, start-ups, existing businesses and non-profits; venture capital funding services to emerging and start-up companies; venture capital services, namely, providing financing to emerging and start-up companies
3	39WORKS (standard character)	4737776	9	computer game software
			42	computer software consultancy; computer programming; quality control for others in the field of information technology; consumer product safety testing and consultation in the field of information technology; information technology consultancy
4	39WORKS (standard character)	4953832	35	Business development services, namely, providing start-up support for businesses of others; business support services, namely, business consulting to freelancers, start-ups, existing businesses and non-profit organizations; incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits; management services, namely, on-line business development services, namely, providing start-up support for businesses of others
			36	Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits; incubation services, namely, rental of office space to freelancers, start-ups, existing businesses and non-profits; venture capital funding services to emerging and start-up companies; venture capital services, namely, providing financing to emerging and start-up companies

 

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the services of the applicant and registrant.  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

Similarity 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).

 

WERK mark

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). 

 

In this case, the first word of applicant’s mark is “WERK”, which is considered the dominant feature of the mark.  The dominant feature of applicant’s mark is identical to the registered mark “WERK”.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  Thus, the marks are identical in-part because the applied-for mark wholly incorporates the single-worded registered mark WERK as the dominant feature of the mark. 

 

Thus, the marks are confusingly similar.

 

39 WORKS and 39WORKS marks

 

When evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the services because it is that portion of the mark that consumers use when referring to or requesting the services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  In this case, the word portion of the registrant’s marks “39 WORKS” and “39WORKS” are considered the dominant features and are given greater weight when considering likelihood of confusion between the registered and the applied-for marks.

 

Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).  The applied-for mark merely reverses or transposes the different elements that comprise the word portion of the registered marks. The registered marks comprise of the number “39” and the wording “WORDS”, respectively, in the combined and separate form.  However, the applied-for mark “WERK_39” changes the letter “O” and deletes the letter “S” in the word “WORKS”, moves the identical number “39” to follow after the wording, and adds an underline between the wording and the number. 

 

Moreover, the change of the letter “O” to “E” in the wording “WORKS” is only a minor change because the marks sound similar and the applied-for mark merely takes on the singular form of the registered mark.  An applied-for mark that is the singular form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).  Thus, because the marks are essentially identical in sound, appearance, meaning, and commercial impression, similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Additionally, the term “WERK” translates to the word “WORK” in German, according to Collins, Cambridge, Word Hippo, and Majstro.  There is also evidence to show that the wording “WERK” provokes a mental impression similar to the wording “WORK”, according to Collins dictionary, Cyber Definitions, Urban Dictionary, Werk It Festival, and Werk. 

 

Thus, because the marks use the identical numbers “39” and a variation of the wording “WORK”, the marks are confusingly similar.

 

Similarity of the Services

 

The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

WERK mark

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on 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)). 

 

The application uses broad wording to describe “Providing instructional seminars;, namely, for educational purposes; Providing workshops for training purposes; Conducting courses, seminars and workshops; Providing training courses, conferences, exhibitions and competitions; Career counseling and coaching; Coaching in economic and management matters”, which presumably encompasses the narrowly described services in the registration, “Teaching in the field of pattern making and clothing manufacturing; Providing on-line training courses, seminars, workshops in the field of pattern making and clothing manufacturing; Providing facilities for pattern making and clothing manufacturing training” in International Class 41.  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).  Specifically, the applicant does not provide restrictions of its “instruction seminars”, “courses, seminars and workshops” services in a specific field, and, thus encompasses the registrant’s “teaching”, “courses, seminars, [and] workshops” in the field of “pattern making and clothing manufacturing”. 

 

Therefore, because the services of the applied-for mark have no restrictions as to nature, type, channels of trade, or classes of purchasers, these services are “presumed to travel in the same channels of trade to the same class of purchasers” as registrant’s.  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)). 

 

39 WORKS and 39WORKS marks

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on 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)). 

 

The application uses broad wording to describe “Business networking services; Business services relating to the arrangement of joint ventures; Market analysis; Providing business management support for start-up companies and other businesses”, which presumably encompasses the services narrowly described in the registration, “Business development services, namely, providing start-up support for businesses of others; business support services, namely, business consulting to freelancers, start-ups, existing businesses and non-profit organizations; incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits; management services, namely, on-line business development services, namely, providing start-up support for businesses of others” in International Class 35.  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).  Specifically, the applicant’s services for “Business networking services; Business services relating to the arrangement of joint ventures; Market analysis” include the registrant’s services for “Business development services, namely, providing start-up support for businesses of others; business support services, namely, business consulting to freelancers, start-ups, existing businesses and non-profit organizations” because “business networking”, “business services”, and “market analysis” include “business development”, “support”, and “consulting” services and “joint ventures” include “freelancers, start-ups, existing businesses and non-profit organizations”.  Also, the applicant’s “Providing business management support for start-up companies and other businesses” services includes both offline and online services, including registration’s services for “management services, namely, on-line business development services, namely, providing start-up support for businesses of others”. 

 

The application uses broad wording to describe “Providing financing to start-up and emerging companies”, which presumably encompasses or is identical to the services describes in the registration, “Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits” and “venture capital services, namely, providing financing to emerging and start-up companies” in International Class 36.  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). 

 

The registration uses broad wording to describe “computer software consultancy; computer programming; quality control for others in the field of information technology; consumer product safety testing and consultation in the field of information technology; information technology consultancy”, which presumably encompasses the services narrowly described in the application “Development and implementation of computer programs; Development and implementation of computer software for project management; Software engineering; Software design and development; Computer programming; Development and implementation of programs for data processing; Development and testing of software; Programming of software for information platforms on the Internet; Development of data bases”  in International Class 42.  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).  Specifically, services for “computer programming” is identical for both marks.  Moreover, registrant’s “computer programming”, “quality control” and information technology “consumer product safety testing” include applicant’s services to develop, implement, design, and test computer programs and software.

 

Because the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers, they 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)). 

 

Therefore, because the marks are confusingly similar and the services are presumed to travel in the same trade channels, the applied-for mark is refused registration under Trademark Act Section 2(d) for likelihood of confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirement sets forth below.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely on the foreign registration under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the services based on Section 1(b).

 

IDENTIFICATION OF SERVICES

 

THIS PARTIAL REFUSAL APPLIES TO CLASSES 35, 36, and 42 ONLY

 

Class 35

 

The wording “business services relating to the arrangement of joint ventures” in the identification of services is indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the nature or purpose of the services.  For example, “Planning concerning business management, namely, searching for partners for amalgamations and business take-overs as well as for business establishments” and “Business services, namely, assisting the owners of intellectual property and intangible assets in finding investors” are acceptable services in International Class 35.

 

The wording “Providing business management support for start-up companies and other businesses” in the identification of services is indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the nature or purpose of the services.  For example, “Management services, namely, on-line business development services, namely, providing start-up support for businesses of others” and “Business development services, namely, providing start-up support for businesses of others” are acceptable services in International Class 35.

 

Class 36 is acceptable

 

Class 41

 

The wording “Providing instructional seminars;, namely, for educational purposes”, “Providing workshops for training purposes”, “Conducting courses, seminars and workshops”, and “Providing training courses, conferences, exhibitions and competitions” in the identification of services is indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must limit the identification of services to a specific field.  For example, “Educational services, namely, conducting instructional seminars for educational purposes in the field of tax preparation”, “Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of tax preparation and distribution of training material in connection therewith”, “conducting of professional golf competitions” and “Providing on-line art exhibitions” are acceptable identification of services in class 41.

 

The wording “Career counseling and coaching” in the identification of services is indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the nature of the services.  For example, “Career counseling, namely, providing advice concerning education options to pursue career opportunities” is acceptable identification of services in class 41.

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services.  TMEP §1402.01(a). 

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of services, (2) before and after “namely,” and (3) between each item in a list of services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Class 42

 

The wording “Programming of software for information platforms on the Internet” in the identification of services is indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify that the services are “for others”.  For example, “Programming of computer software for others” is an acceptable identification of services in International Class 42.

 

The wording “Development of data bases” in the identification of services is indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “data bases” is too broad.  For example, “Development, updating and maintenance of software and database systems” is an acceptable identification of services in International Class 42.

 

Applicant may substitute the following wording, if accurate (suggested changes in bold, additional specification needed in italics): 

 

Class 35          Business networking services; Business services, namely, planning concerning business management, namely, searching for partners for business establishments of joint ventures; Market analysis; Management services, namely, business development services, namely, providing start-up support for companies and businesses of others

 

Class 36          Providing financing to start-up and emerging companies

 

Class 41          Providing instructional seminars for educational purposes in the field of {indicate specific field, e.g. pet care, math, tax preparation}; Providing workshops for training purposes in the field of {indicate specific field, e.g. pet care, math, tax preparation}; Conducting courses, seminars and workshops in the field of {indicate specific field, e.g. pet care, math, tax preparation}; Educational services, namely, providing training courses, conferences, exhibitions and competitions in the field of {indicate specific field, e.g. entertainment, education, culture, sports, and other non-business and non-commercial fields, etc.}; Career counseling and coaching, namely, providing advice concerning education options to pursue career opportunities; Coaching in economic and management matters

 

Class 42          Development and implementation of computer programs; Development and implementation of computer software for project management; Software engineering; Software design and development; Computer programming; Development and implementation of programs for data processing; Development and testing of software; Programming of software for information platforms on the Internet for others; Development of database systems

 

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

 

ENGLISH TRANSLATION REQUIRED

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  In the present case, the wording “WERK” requires translation.

 

The following translation statement is suggested: 

 

The English translation of the word “WERK” in the mark is “WORK”. 

 

TMEP §809.03.  See attached translation evidence.

 

RESPONSE GUIDELINES

 

For this application to proceed further, applicant must explicitly address each refusal and requirement raised in this Office action.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  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.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

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 and requirements 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.

 

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 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.  

 

/Joanna Han/

Joanna Han

Trademark Examining Attorney

Law Office 126

(571) 270-3617

joanna.han@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 10/15/2018 FOR U.S. APPLICATION SERIAL NO. 88011858

 

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 10/15/2018 (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.