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: 12/28/2018

 

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.

 

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).

 

Summary of Issues

• Particular Wording in the Identification of Services is Indefinite and Broad
• Multiple Class Advisory
• Disclaimer Required

 

Particular Wording in the Identification of Services is Indefinite and Broad

 

Applicant must clarify particular wording in the identification of services because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifics are set forth below.

 

Class 35 Issues:

·       “Mentoring services, namely, providing advice in the fields of innovation and entrepreneurship to emerging companies” is indefinite and broad. Applicant must clarify the nature and purpose of the services. For example, educational mentoring services belong in Class 41. If this is less of an educational service and more in line with business consulting, this must be clarified, and the services may remain in Class 35.

·       “incubator services, namely, providing marketing, management, and operational advice in the form of start-up support for others” is indefinite. Applicant must clarify the broader category of services this falls under. If applicant is providing business consulting services to start up companies, this maybe clarified. If applicant is actually providing marketing and business management services to particular clients, namely, start-ups, this may be clarified.

·       “business incubator services, namely, providing advice in the areas of corporate growth strategy, strategic planning, recruiting and operational efficiencies and effectiveness” is indefinite. Applicant must clarify the broader category of services this falls under. If applicant is providing business advice, this may be clarified.

·       “business collaboration services, namely, providing a shared environment consisting of laboratories, equipment, technology, conference rooms, and common areas to users for the purpose of promoting collaboration” is indefinite as the purpose of promoting business collaboration is unclear. If this is a type of incubation service, this should be clarified. Applicant should name the types of spaces provided as well as clarify that the equipment is for business purposes, if accurate. This must be done to justify Class 35 classification; services such as the provision of medical laboratories belong in Class 42. As applicant’s services appear business focused, this is not suggested. If applicant is providing Class 42 services, however, this must be clarified.

·       Applicant must clarify the nature of their publicity services. If these are publicity agency or bureau services, this may be specified. If these are publicity and sales promotion services, this may be clarified. If the publicity is related to advertising, this may be clarified.

Class 36 Issues:

·       Suggestion Only: Applicant may wish to specify that they engage in real estate management “services” for the sake of clarity.

Applicant may adopt the following identification, if accurate:

 

Class 35: Business consulting services, namely, mentoring in the nature of providing business advice in the fields of innovation and entrepreneurship to emerging companies; marketing services, namely, marketing as an incubator for the purpose of providing start-up support for others; business management services, namely, providing business management as an incubator for the purpose of providing start-up support for others; business consulting, namely, providing operational advice as an incubator for the purpose of providing start-up support for others; business incubator services, namely, providing business advice in the areas of corporate growth strategy, strategic planning, recruiting and operational efficiencies and effectiveness; Incubation services, namely, providing work space in the nature of laboratories, conference rooms, and common areas, and containing business equipment, including business technology equipment, for the purpose of promoting collaboration; business communications services, namely, public relations, advertising, marketing and publicity agency services; rental and leasing of office machinery and equipment

 

Class 36: Real estate management services; real estate services, namely, real estate brokerage, acquisition, rental, leasing, and management services; investment management services; property management services, namely, real estate management; financial services, namely, financial consultation, financial analysis, financial planning, financial management, financing services, providing working capital, namely, debt and equity capital, tangible and intangible asset financing, and financial portfolio management; business incubator services, namely, providing debt and equity financing to emerging and start-up companies

 

Class 37: Real estate development; development, maintenance and repair of office, research and laboratory real estate properties; building construction and repair; real estate property maintenance services

 

Class 41: Education services, namely, mentoring in the fields of innovation and entrepreneurship to emerging companies

 

Class 42: Architectural design services; engineering services; rental and leasing of computers; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; creating and maintaining blogs for others; rental and leasing of laboratory machinery and equipment

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.

Multiple Class Advisory

 

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 five classes; however, applicant submitted fees sufficient for only four 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.

 

Disclaimer Required

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim “SCIENCE” because it is not inherently distinctive.  This unregistrable term at best is merely descriptive of a feature of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from the Oxford Dictionary website shows that a “laboratory” is a “room or building equipped for scientific experiments, research, or teaching, or for the manufacture of drugs or chemicals”. The attached evidence from the American Heritage Dictionary defines a “laboratory” as “A room or building equipped for scientific experimentation or research”. As applicant’s services involve the rental and leasing of laboratories, the development, maintenance and repair of laboratory real estate, real estate management (this real estate may be in the field of science), and providing a shared environment consisting of laboratories, it is evident that applicant’s services involve real estate locations for use in the field of science. Further, the attached evidence from the Cummings Properties website shows that there are properties in the field of real estate that are for use by “biotech or life science” firms. Thus, it is evident that “SCIENCE” is descriptive of the field of applicant’s services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SCIENCE” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Response to 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.  

 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

571-270-5984

Amanda.Rosen@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 12/28/2018 FOR U.S. APPLICATION SERIAL NO. 88145157

 

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 12/28/2018 (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.