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:  September 05, 2019

 

This Office action responds to applicant’s communication filed on September 3, 2019.

 

Introduction

 

In the initial Office action, examining attorney partially refused registration of applicant’s trademark under Trademark Act Section 2(d) and required applicant to submit an amended identification of services and a disclaimer statement.

 

Examining attorney notes the refusal under Section 2(d) and the requirement to submit a disclaimer statement has been satisfied.  See TMEP §§713.02, 714.04.

 

For the reasons set forth below, the requirement to submit an amended identification of services is now made FINAL.  See 37 C.F.R. §2.63(b).

 

Amended Identification of Services Required

 

In the initial Office action, examining attorney required applicant to submit an amended identification of services.  In response, applicant submitted an amended identification of services, however, further clarification is required.  See 37 C.F.R. §2.63(b).

 

Particular wording in the proposed amendment to the identification is not acceptable 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).

 

Applicant’s proposed amendment includes entries for “providing … non-downloadable software applications featuring study materials” and “Educational services, namely, providing … certifications for parents and teachers in the field of pre-school education.”

 

This portion of the proposed amendment is beyond the scope of the original identification because applicant’s original identification did not include any reference to software.  Furthermore, “certification” is not a service is any international class.  It is a specialized activity in US Classes A or B.  Therefore, this wording is not within the scope of applicant’s original identification of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Furthermore, the wording “Educational services namely, providing online courses …; Educational services namely, providing training to parents and teachers for initiatives and advocacy to support education in pre-schools; Educational services namely, providing online and correspondence schools” in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may adopt the following identification, if accurate (bold indicates modified language):

 

International Class 036: No changes required;

 

International Class 041: Education services, namely, operation of a school; Education services, namely, operation of online, correspondence, and virtual schools; Education services, namely, providing pre-school classroom instruction; Educational services, namely, providing courses of instruction for pre-schools and distribution of course material in connection therewith; Educational services, namely, providing online and correspondence courses of instruction for pre-schools and distribution of course materials in connection therewith; Educational services, namely, providing online courses _____ {specify level, e.g., at the pre-school level, or field, e.g., in the field of science, etc.} and non-downloadable software applications featuring study materials; Educational services, namely, providing training to parents and teachers in advocacy for initiatives to support education in pre-schools; Educational services, namely, providing training to teachers for the purpose of certification in support of the operation of a school; Educational services, namely, developing curriculum, lesson plans, and educational materials for pre-schools; Educational services, namely, operation of online and correspondence schools; Educational services, namely, providing classes, seminars, workshops, and training, and certifications for parents and teachers in the field of pre-school education; Educational programs, namely, pre-schools; Charitable services namely, academic mentoring of school age children; Charitable services namely, operation of a school; Charitable services namely, providing school supplies to children in need.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or 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.

 

Response Guidelines

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: “Educational services namely, providing online courses and non-downloadable software applications featuring study materials; Educational services namely, providing training to parents and teachers for initiatives and advocacy to support education in pre-schools; Educational services namely, providing online and correspondence schools; Educational services, namely, providing … certifications for parents and teachers in the field of pre-school education.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for International Class 036 and the following services in International Class 041 only: Education services, namely, operation of a school; Education services, namely, operation of online, correspondence, and virtual schools; Education services, namely, providing pre-school classroom instruction; Educational services, namely, providing courses of instruction for pre-schools and distribution of course material in connection therewith; Educational services, namely, providing online and correspondence courses of instruction for pre-schools and distribution of course materials in connection therewith; Educational services, namely, providing training to teachers for the purpose of certification in support of the operation of a school; Educational services, namely, developing curriculum, lesson plans, and educational materials for pre-schools; Educational services, namely, providing classes, seminars, workshops, training for parents and teachers in the field of pre-school education; Educational programs, namely, pre-schools; Charitable services namely, academic mentoring of school age children; Charitable services namely, operation of a school; Charitable services namely, providing school supplies to children in need. 

 

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)

 

 

John Sullivan

/John Sullivan/

Examining Attorney

Law Office 114

(571) 272-2519

john.sullivan@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 September 05, 2019 for

U.S. Trademark Application Serial No. 88211367

 

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. 

 

 

John Sullivan

/John Sullivan/

Examining Attorney

Law Office 114

(571) 272-2519

john.sullivan@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 September 05, 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.”