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: July 02, 2019

 

***Upon further consideration, the assigned examining attorney has reviewed the referenced application and determined the following.  Every attempt is made to address all relevant issues in the first examination of trademark applications.  The examining attorney regrets any inconvenience to the applicant at this time.

 

Notwithstanding the following, all issues on this application have been resolved.

 

IDENTIFICATION OF GOODS/SERVICES

 

GENERAL GUIDELINES

 

In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a).  If applicant uses indefinite words and phrases such as "services in connection with," "such as," "including," "and like services,"  "concepts," or "not limited to," such wording must be followed by "namely," and a list of the specific services identified by their common commercial or generic names.  See id.

 

Applicant may amend the identification to list only those items that are within the scope of the goods/services set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

Unacceptable identification

 

PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold.  If the recommended changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information into the amended description. 

 

Class 041

 

Applicant currently has the following identification:

 

“Organizing, arranging, and conducting training programs, conferences, workshops, exhibitions, seminars, webinars, and educational videos in the field of developing healthy norms for use of technology, smart devices, and social media; organizing, arranging, and conducting conferences, workshops, exhibitions, seminars, webinars, training programs, and educational videos for instructing parents, counselors, educators, youth leaders, public safety officers, and technology providers, on advising and assisting students in healthy usage of technology, smart devices, and social media; providing assistance to parents, counselors, educators, youth leaders, public safety officers, and technology providers in educational program implementation for development of healthy usage of technology, smart devices, and social media in children and young adults; providing a website featuring educational information for use by mental health professionals, parents, counselors, educators, school administrators, youth leaders, and public safety officers on developing healthy habits for technology, smart device, and social media usage in children and young adults; consulting services for schools for developing educational programs in the fields of healthy habits for technology, smart device, and social media usage in children and young adults ”

 

"Providing a website featuring educational information for use by mental health professionals, parents, counselors, educators, school administrators, youth leaders, and public safety officers on developing healthy habits for technology, smart device, and social media usage in children and young adults" should be classified in IC 44. Providing educational information is classified based on the subject matter. See the following example from the ID Manual:

 

000-50             000      Providing educational information in the field of {indicate subject matter of information} [subject matter of information determines classification]

 

In this case, the subject matter appears to be "developing healthy habits for technology, smart device, and social media usage in children and young adults," which concerns healthy lifestyles. See the following example from the ID Manual:

 

044-2238         044      Providing a website featuring information regarding healthy living and lifestyle wellness

 

 

The following substitute identification with amended wording is suggested, if appropriate:

 

“Organizing, arranging, and conducting training programs, conferences, workshops, exhibitions, seminars, webinars, and educational videos in the field of developing healthy norms for use of technology, smart devices, and social media; organizing, arranging, and conducting conferences, workshops, exhibitions, seminars, webinars, training programs, and educational videos for instructing parents, counselors, educators, youth leaders, public safety officers, and technology providers, on advising and assisting students in healthy usage of technology, smart devices, and social media; providing assistance to parents, counselors, educators, youth leaders, public safety officers, and technology providers in educational program implementation for development of healthy usage of technology, smart devices, and social media in children and young adults; consulting services for schools for developing educational programs in the fields of healthy habits for technology, smart device, and social media usage in children and young adults” in Class 041

 

“providing a website featuring educational information for use by mental health professionals, parents, counselors, educators, school administrators, youth leaders, and public safety officers on developing healthy habits for technology, smart device, and social media usage in children and young adults” in class 044

 

Note:

 

1.     Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names.  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – USE

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class(es) 016, 035 and 041; and applicant needs a specimen for class(es) 044.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

FAILURE TO RESPOND – ABANDONMENT OF SPECIFIC GOODS/SERVICES IN INTERNATIONAL CLASS(ES) (ADVISORY)

 

If applicant does not respond within six months of the mailing date of this Office action, the goods and/or services/class(es) to which the  above requirement(s) apply will be deleted from the application by Examiner's Amendment:  The application will then proceed for the remaining goods and/or services/class(es).  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

RESPONSE

 

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.  

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Attorney

Law Office 103

571-272-2651

paul.moreno@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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 02, 2019 for

U.S. Trademark Application Serial No. 88199206

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Attorney

Law Office 103

571-272-2651

paul.moreno@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 02, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”