To: | Hirsch, Peter (plhirsch@hotmail.com) |
Subject: | U.S. Trademark Application Serial No. 88155132 - GLOBAL SUCCESS INITIATIVE - N/A |
Sent: | July 22, 2019 04:06:47 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88155132
Mark: GLOBAL SUCCESS INITIATIVE
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Correspondence Address:
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Applicant: Hirsch, Peter
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 22, 2019
This Office action is in response to applicant’s communication filed on July 18, 2019.
In a previous Office action(s) dated January 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified services. In addition, applicant was required to satisfy the following requirements: (1) disclaim descriptive wording in the mark and (2) amend the identification of services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: disclaimer of descriptive wording provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN REFUSED
Applicant was previously refused registration in International Class 41 because the specimen did not show the applied-for mark in use in commerce. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting a substitute specimen for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below. Thus, the refusal to register the applied-for mark in International Class 41 is now made FINAL because applicant failed to provide evidence of use of the mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION AMENDMENT REQUIRED—AMENDMENT NOT ACCEPTED—EXCEEDS SCOPE OF ORIGINAL IDENTIFICATION
The requirement to amend the identification of services is made FINAL.
In this case, the application originally identified the services as follows: “Educational services, namely, providing online instruction in the fields of education technology; Providing fitness training services in the field of education technology.”
However, the proposed amendment identifies the following services: “Educational services, namely, providing online and in person classes, seminars, workshops in the fields of soft skills training (i.e. leadership development, customer service and team building).”
This proposed amendment is beyond the scope of the original identification because the proposed amendment expands applicant's services from online instruction only to additionally include in-person classes, seminars, and workshops, which were not included in the original identification of services. Further, applicant's services were originally limited to providing online instruction in the fields of education technology and providing fitness training services; however, the proposed amendment expands the fields to soft skills training related to leadership development, customer service and team building, which are not encompassed by the field/subject matter in the original application.
If accurate, applicant may adopt the following wording:
Class 41: Educational services, namely, providing online instruction in the fields of education technology; providing fitness training services in the field of {specify fitness field, e.g., pilates, yoga, tennis}
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 should additionally note the advisory below.
PERSONS WHO MAY SIGN RESPONSES—ADVISORY
If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602. If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.
Applicant should additionally note the advisory below.
DOMESTIC PRO SE APPLICANT—ADVISORY
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
RESPONSE GUIDELINES
(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).
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE