Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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:  June 10, 2020

 

The undersigned trademark examining attorney issued a non-final Office action on November 22, 2019, requiring acceptably identified and classified goods and services.  Applicant filed a timely response on May 11, 2020, proposing amendments to its services.  Because some of the proposed amendments are outside the scope of services of this application, the following requirement is now made final.

 

Acceptable Classification and Identification of Goods/Services Required

 

Particular wording in the proposed amendment to the identification is not acceptable, and is subject to this final requirement, because it exceeds the scope of the identification in the application.  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, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the “information” services as follows:  “information…services relating to publicity, marketing communications, reputation management or business administration, including such services provided online or via the Internet.”

 

The proposed amendment identifies the following services:

 

Class 35:  Providing information in the field of consumer services and government

 

Class 36:  Providing information in the field of finance

 

Class 43:  Providing information in the field of senior living

 

Class 44:  Providing information in the field of healthcare

 

In each case, this portion of the proposed amendment is beyond the scope of the original identification because the information services are not restricted by the language set forth in the initial identification.  Within the scope of this application are the provision of publicity information, marketing communications information, business reputation management information, and business administration information.  Therefore, in order for the added wording to remain within the scope of the initial identification, each would need to be so characterized and would properly be classified in Class 35 with information in the fields of business, marketing communications, business reputation management, and business administration.  Information services are properly classified according to their subject matter.  TMEP §1402.11(b). 

 

Applicant may adopt the following identification in International Class 35, if accurate:

 

Providing {specify publicity, marketing communications, business reputation management, business administration} information in the fields of consumer services, government, finance, senior living, and healthcare

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

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).

 

 

Advisory: Partial Abandonment

 

If applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application: 

 

Class 35:  Providing information in the field of consumer services and government

 

Class 36:  Providing information in the field of finance

 

Class 43:  Providing information in the field of senior living

 

Class 44:  Providing information in the field of healthcare

 

The application will then proceed with the following goods and services only: 

 

Class 16:  Publications, namely, newsletters in the fields of finance, health, senior living, government, and consumer services

 

Class 35:  Content management services, namely, optimization of online websites and mobile sites for third parties

 

Class 41:  Publications, namely, providing online newsletters in the fields of finance, health, senior living, government and consumer services

 

Class 42:  Content management services for others in the nature of providing customized online websites and web pages that allow users to publish, distribute, edit, and modify website and mobile site and other digital content; content management services, namely, maintaining the website and mobile sites of others in the nature of planning, design, development, maintenance, and technical support in the nature of troubleshooting software issues of online websites and mobile sites for third parties; content management system, namely, providing software as a service (SAAS) services, namely, hosting software for use by others for publishing, distributing, editing and modifying website and mobile site and other digital content for others, as well as for maintaining the websites and mobile sites of others, namely, for planning, design, development, maintenance, support and optimization of online websites and mobile sites for third parties; website and mobile site design and development for others; website and mobile site hosting services; providing software technology services, namely, design, development, customization, technical support in the nature of installation, repair, and maintenance, and updating of marketing automation technology software; content management system services in the nature of providing a web site featuring technology that enables users to engage in an electronic system for publishing, distributing, editing and modifying website and mobile site and other digital content for others, as well as for maintaining the websites and mobile sites of others, namely, for planning, design, development, maintenance, support and optimization of online websites and mobile sites for third parties

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Rebecca M. Eisinger/

Staff Attorney, Law Office 100

United States Patent & Trademark Office

Informal inquiries: rebecca.eisinger@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 10, 2020 for

U.S. Trademark Application Serial No. 88209979

 

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. 

 

 

/Rebecca M. Eisinger/

Staff Attorney, Law Office 100

United States Patent & Trademark Office

Informal inquiries: rebecca.eisinger@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 June 10, 2020, 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.”