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: 6/13/2019

 

 

THIS IS A FINAL ACTION.

 

 

 

 

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.  

 

Introduction

 

This Office action is in response to applicant’s communication filed on June 10, 2019.  In the initial Office action, the Examining Attorney issued a Section 2(d) advisory and the following requirement:

 

Requirement for Accurate Identification and Classification of Services (and Compliance with Multiple-Class Application Requirements)

 

As the applicant’s response indicates, the two applications referenced in the advisory have been abandoned and no longer bar registration of this application.  The applicant’s response also includes an amended identification and argument and evidence regarding the identification requirement.  The response only partially satisfies the identification requirement, which is maintained and made final as to specific services as discussed below.

 

Summary of Issues Applicant Must Address

• Requirement for Accurate Identification and Classification of Services (and Compliance with Multiple-Class Application Requirements)

 

FINAL Identification and Classification of Services Requirement – As to Specific Services in Classes 35 and 36

 

The requirement for a definite, properly classified identification of services, within the scope of the original identification is now made FINAL for the reasons set forth below.  37 C.F.R. §§2.32(a)(6), 2.63(b), 2.71(a); TMEP §1402.01; TMEP §§805, 1402.06 et seq., 1402.07. 

 

In response to the previously issued requirement, the applicant has proposed the following amendments to its identification of services:

 

Marketing, advertising and promotion services; Provision of market research and marketing information services; Promoting the goods and services of others via the internet and communication networks; Business and advertising services, namely, business consultation in the field of media planning and media buying for others, and advertising services for tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; Consulting services in the fields of advertising and marketing; Facilitating the exchange and sale of services and products of third parties via the internet and communication networks by operating an online marketplace; Providing online marketplaces for sellers of goods and/or services; Providing online interfaces, namely web interfaces and mobile interfaces for connecting sellers with buyers; Business networking; Advertising services, namely, providing classified advertising space via the internet and communications networks; Charitable services, namely, promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; Providing telephone directory information via the internet and communications networks; Electronic catalog services, namely, presentation of goods and services of others; Customer relationship management; Business assistance and consulting services; Providing online interfaces, namely web interfaces and mobile interfaces where user's can post comments, ratings, reviews, and recommendations concerning the services of others in the field of business organizations, professional services, restaurants, accommodations, travel, and retail services using global communication networks; Providing online business directories featuring restaurants, bars, hotels, stores, movie theaters, dance clubs, museums, art galleries, and other cultural and social spaces, in Class 35.

 

Financial transaction processing services, namely, providing secure commercial transactions and payment options; Electronic processing and transmission of bill payment data for users of computer and communication networks; Electronic funds transfer services; Credit card, debit card, and gift card transaction processing services; Merchant services, namely, payment transaction processing services; Providing electronic mobile payment services for others; Financial information and advisory services; Credit card, debit card, cash card, and gift card payment processing services; Provision of financial information services, in Class 36.

 

This requirement is limited to the wording highlighted above in bold.

 

Class 35

 

The original identification included the wording “Providing online facilities for connecting sellers with buyers.”  The applicant was required to clarify this wording because it was too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

A “facility” is “A building, room, array of equipment, or a number of such things, designed to serve a particular function.”  The American Heritage® Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/word/search.html?q=facility.  As the attached excerpt from the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual indicates, physical facilities are classified according to their purpose.  On-line facilities are classified in Class 38 if they allow for real-time interaction among computer users.  Therefore, the applicant was advised that if its facilities provide for this type of real-time interaction among users, similar to a chat room, then the applicant must specify the real-time interaction function of these services and reclassify them in Class 38.  If not, and if the applicant actually intended facility to refer to a website for this purpose, the applicant was advised that it could amend the wording “online facilities” to “website,” and the services would then be properly classified in Class 35. 

 

Instead, the applicant has amended this wording to “Providing online interfaces, namely web interfaces and mobile interfaces for connecting sellers with buyers.”  This amendment is indefinite, too broad, and exceeds the scope of the original wording.  An “interface” is “a place where . . . things meet . . . or a thing that connects them.  See MacMillan Dictionary (2019), http://www.macmillandictionary.com/dictionary/american/interface_1.  The term “interface” in this context would include software for this purpose.  See id.  For example, an app may be downloaded onto a mobile device to act as an interface between the device and on-line software and data.  Although such a downloaded app might be described as a “mobile interface,” because it has been downloaded, it would not be an “online” interface.  Thus, the wording “Providing online interfaces, namely . . . mobile interfaces for connecting sellers with buyers” is internally inconsistent, and the term “mobile” exceeds the scope of the “online” limitation in the original identification.  Further, both of the applicant’s interfaces exceed the scope of the original term “facility” because an interface is how a consumer would access an on-line facility; it is not itself a facility.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, remains operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).  Additionally, software for providing an interface is not classified in Class 35; it is classified in Classes 9 and 42 based on whether it is downloadable/recorded, or provided on-line in non-downloadable form.  See the attached excerpt from the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  Thus, the applicant must either delete this wording or amend it to a website in Class 35 or an on-line facility in Class 38 as discussed above.

 

The applicant was also required to amend the original wording “Providing online facilities featuring user comments concerning business organizations, service providers, and other resources.”  As originally worded, these services were too broad and could include services in Class 38.  The provision of a website featuring ratings, reviews and recommendations posted by consumers for commercial purposes is classified in Class 35.  Additionally, for classification in Class 35, the applicant was required to limit the “business organizations, service providers, and other resources” to just service providers and provide the field of these services providers.  Instead, the applicant has amended this wording to “Providing online interfaces, namely web interfaces and mobile interfaces where user's can post comments, ratings, reviews, and recommendations concerning the services of others in the field of business organizations, professional services, restaurants, accommodations, travel, and retail services using global communication networks.”  This amendment is indefinite, still too broad, and exceeds the scope of the original wording.  The applicant is referred to the above explanation as to why amending online facilities to online interfaces is not acceptable. 

 

Additionally, the amendment from “featuring user comments” to “where user’s can post comments . . . ” also changes the scope and classification of these services.  Providing a website featuring ratings, reviews, and recommendations posted by consumers is classified, like information services, based on subject matter.  See the attached excerpt from the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  In contrast, a website that allows users to post comments, ratings, reviews, and recommendations is a software service in Class 42.  See the attached example.  The applicant may not amend its services to software with this function because the original wording was limited to “featuring user comments.”  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, remains operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).  The applicant must also delete the wording “business organizations, professional services,” which does not identify a specific field of services provider, confirm that the users are consumers, and confirm that the services are “for commercial purposes,” if accurate.  The suggested amendments below are limited to Class 35.

 

The original identification included the wording “Electronic catalog services” in the identification of services.  The applicant was required to clarify this wording to specify the types of goods featured by these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Instead, the applicant amended this wording to “Electronic catalog services, namely, presentation of goods and services of others.”

 

A “catalog” is “a pamphlet or book that contains [a complete enumeration of items arranged systematically with descriptive details].”  Merriam-Webster’s Dictionary (2019), http://www.merriam-webster.com/dictionary/catalog.  An “electronic catalog” is an online version of the traditional print type of catalog.  Thus, an online catalog does present goods (and possibly services); however, because this wording does not specify the types of goods and services offered by the catalog, or their field, the wording is still indefinite.  The applicant is referred to the attached printouts from the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual, which indicate that the service of presentation of goods has been deleted, and that specific goods or a field must be specified for catalogs and catalog services.  The applicant may specify that it offers a wide variety of consumer goods and services of others, similar to the attached examples.  However, the applicant will later be required to provide specimens substantiating that it offers a wide variety of goods and services.  See TMEP §§904.01(a), 1402.03.

 

The original identification included the wording “Providing online business directories featuring the businesses, products and services of others” in the identification of services.  The applicant was required to clarify this indefinite wording by specifying the fields of businesses featured in these directories.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant has amended this wording to “Providing online business directories featuring restaurants, bars, hotels, stores, movie theaters, dance clubs, museums, art galleries, and other cultural and social spaces.”  The wording “and other cultural and social spaces” is not acceptable because it does not identify a specific business field.  No suggestions for amendment are provided.

 

Class 36

 

The original identification included the wording “Processing and transmission of bill payment data for users of computer and communication networks” in the identification of services.  The applicant was required to clarify this wording because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Transmission of bill payment data is only classified in Class 36 if it is subsequent to electronic payment processing services.  Therefore the applicant was required to amend these services to “Electronic payment services involving electronic processing and subsequent transmission of bill payment data,” if accurate.  The applicant has not done so.  Therefore, this wording is still too broad.  The applicant is referred to the attached printouts from the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual, which include a note explaining the requirement to include “subsequent” and which provide examples of transmission services in Class 38.  Therefore, the applicant must amend this wording, or reclassify the transmission services, for the foregoing reasons.

 

To summarize, applicant may adopt any or all of the following identifications of services, if accurate:

 

Marketing, advertising and promotion services; Provision of market research and marketing information services; Promoting the goods and services of others via the internet and communication networks; Business and advertising services, namely, business consultation in the field of media planning and media buying for others, and advertising services for tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; Consulting services in the fields of advertising and marketing; Facilitating the exchange and sale of services and products of third parties via the internet and communication networks by operating an online marketplace; Providing online marketplaces for sellers of goods and/or services; Providing online websites for connecting sellers with buyers; Business networking; Advertising services, namely, providing classified advertising space via the internet and communications networks; Charitable services, namely, promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; Providing telephone directory information via the internet and communications networks; Electronic catalog services featuring a wide variety of goods and services of others; Customer relationship management; Business assistance and consulting services; Providing websites featuring ratings, reviews, and recommendations, and comments related thereto, posted by consumer users concerning the services of others in the fields of restaurants, accommodations, travel, and retail services for commercial purposes using global communication networks; Providing online business directories featuring restaurants, bars, hotels, stores, movie theaters, dance clubs, museums, and art galleries, in Class 35.

 

Financial transaction processing services, namely, providing secure commercial transactions and payment options; Electronic processing and subsequent transmission of bill payment data for users of computer and communication networks; Electronic funds transfer services; Credit card, debit card, and gift card transaction processing services; Merchant services, namely, payment transaction processing services; Providing electronic mobile payment services for others; Financial information and advisory services; Credit card, debit card, cash card, and gift card payment processing services; Provision of financial information services, in Class 36.

 

Providing online facilities for real-time interaction between sellers with buyers; Providing electronic transmission of bill payment data via computer and communication networks, in Class 38.

 

See TMEP §1402.01.

 

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.

 

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).

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Multiple-Class Application Requirements

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least three classes; however, applicant submitted fees sufficient for only two classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) 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.

 

Response Options

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

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

 

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

 

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

 

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

 

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. 

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@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 6/13/2019 FOR U.S. APPLICATION SERIAL NO. 88111400

 

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 6/13/2019 (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.