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: 3/16/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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 DEFERRED

 

A search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred until applicant responds to the issues raised in this Office action, in particular by satisfying one of the following below options.  TMEP §704.02.

 

(1)            Specify the number of classes for which registration is sought and provide the filing fees for all such classes and amend the Identification of Goods and Services to properly classify and identify with sufficient definiteness each good and service for which Applicant will pay the appropriate fee.

 

(2)       Delete the goods and services from the application not covered by the fee(s) already submitted or that will be submitted. 

 

The application was filed online as a Trademark Electronic Application System (TEAS) Reduced Fee (RF) application and therefore the filing fee per class was $275.  See 37 C.F.R. §2.6(a)(1)(i)-(iii); TMEP §810.  The application identifies goods and services in at least 6 classes, which require a total of fees in the amount of $1,650.  Applicant submitted $275 with the application.  The fee submitted was sufficient for only 1 class.

 

SUMMARY OF ISSUES:

• Amended Identification of Goods and Services Requirement
• Multiple Class Application Requirements

 

AMENDED IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIREMENT

 

Applicant has classified the following goods and services in International Class 035:  “electronic publications; newsletters; hosting an online community website featuring shared communications between community members interested in personal and business computer information security.”  However, the proper classification for each item is as follows:  “electronic publications” can be in Classes 009 and 041; “newsletters” can be in Classes 009, 016, and 041, “”hosting an online community website featuring shared communications between community members interested in personal and business computer information” is in Class 042, and “hosting an online community website featuring shared communications between community members interested in personal and business security” is in Class 045. 

 

Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Additionally, the identification for “electronic publications” in International Class 035 is misclassified, indefinite and too broad and must be clarified because the wording does not make clear the nature of the publications and could identify publications in International Classes 9 and 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x).  Applicant must amend this identification to clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  In addition, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See TMEP §1402.03(e).  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.  

 

The following are examples of acceptable formats for identifications for electronic publications (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or

 

Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter} in International Class 41. 

 

Similarly the identification for “newsletters” in International Class 035 is indefinite and too broad and must be clarified because the word does not make clear whether the “newsletters” are products or services and thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether “newsletters” identifies print newsletters in International Class 16, and electronic newsletters in either International Class 9 or 41, and amend the identification to provide the additional information specified below for such goods and services. 

 

Applicant must also specify the literary subject matter of the newsletters, regardless of whether such is downloadable, printed, or non-downloadable.  TMEP §§1402.03(e), 1402.07(b).  For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id. 

 

Likewise, the wording “webinars” in the identification of services for International Class 035 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass downloadable webinars in Class 009 or non-downloadable webinars in Class 041, but cannot be in Class 035 in any form.  Further, Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

Additionally, the wording “community of business people sharing ideas” and “a membership community of professionals sharing information membership services, namely, providing information to members in the fields of market/business research” in the identification of services is indefinite and must be clarified because the nature of these services is not clear, such as whether these are online professional networking services or association services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.   

 

Also, here the “/” between “market” and “business” appears to operate as an “or.”  Generally, “or” is not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the “/” between “market” and “business” makes it unclear whether Applicant is including to market research, business research, or both.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “/” with “and” in the identification of services, if appropriate, or rewrite the identification with the “/” deleted and the services specified using definite and unambiguous language. 

 

Further, the wording “a membership community of professionals sharing information membership services, namely, providing information to members in the fields of market/business research hosting an online community website featuring shared communications between community members interested in personal and business computer information security” in the identification of services for International Class 035 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, because there is no punctuation between “research” and “hosting”, this appears as one service appears like it should be divided into multiple services.  Thus, this wording could encompass “online professional networking services, namely, a membership community of professionals sharing information membership services, namely, providing information to members in the fields of market/business research” in Class 035, and “hosting an online community website featuring shared communications between community members interested in personal and business computer information security” could be in both in International Class 042 and 045, as further specified below, but cannot be in Class 035.

 

In addition, the wording “hosting an online community website featuring shared communications between community members interested in personal and business computer information security” in the identification of services is indefinite and must be clarified because, based on Applicant’s lack of punctuation separating this part of the Class 035 services from the others, it is possible Applicant is referring to “computer information” and “security” as two separate features.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Correspondingly, that wording must also be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, because it is possible Applicant is referring to “computer information” and “security” as either one feature or two separate features, this wording could encompass “hosting an online community website featuring shared communications between community members interested in personal and business computer information security” or “hosting an online community website featuring shared communications between community members interested in personal and business computer information” in International Class 042 and “hosting an online community website featuring shared communications between community members interested in personal and business security” in International Class 045.

 

Also, the wording “promoting the exchange of information and resources within a business community” in the identification of services is indefinite and must be clarified because “promoting the exchange of information and resources” must also include a purpose or benefit from the exchange of information and resources, such as “Promoting the exchange of information and resources within the scientific research and medical communities to achieve advances in the field of healthcare” or “Promoting the exchange of information and resources within the scientific research communities to achieve advances in the field of 21st century transformational science,” or, alternatively, if this is an association service, then Applicant needs to specify the particular field or industry because “business community” is indefinite in that context.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Finally, although not required, the examining attorney highly recommends limiting the identification of goods and services to particular industries, subject matters, or fields of use; though to be clear, this is not a requirement.

 

Applicant may adopt the following language, if accurate (suggestions in BOLD, fields that need completion in BOLD ITALICS and deletions in BOLD STRIKETHROUGH):

 

CLASS 009:   downloadable electronic publications in the nature of {specify type, e.g., magazines, newspapers} in the field of {indicate subject matter or field}; downloadable electronic newsletters in the field of {indicate subject matter or field}; downloadable webinars in the field of {indicate subject matter or field}

 

CLASS 016:   printed newsletters in the field of {indicate subject matter or field}

 

CLASS 035:   electronic publications; newsletters; business research and surveys; conducting business surveys; conducting business research and surveys; webinars; online professional networking services; online professional networking services, namely, community of business people sharing ideas; promoting the exchange of information and resources within a business community {specify purpose or benefit of that exchange of information and resources}; association services, namely, promoting the exchanges of information and resources for market research;  online professional networking services in the nature of a membership community of professionals sharing information membership services, namely, that providing information to members in the fields of market/ and business research hosting an online community website featuring shared communications between community members interested in personal and business computer information security

 

CLASS 041:   non-downloadable electronic publications in the nature of {specify type, e.g., magazines, newspapers} in the field of {indicate subject matter or field}; non-downloadable electronic newsletters in the field of {indicate subject matter or field}; educational services, namely, providing non-downloadable webinars in the field of {indicate subject matter or field}

 

CLASS 042:   hosting an online community website featuring shared communications between community members interested in personal and business computer information security; hosting an online community website featuring shared communications between community members interested in personal and business computer information;

 

CLASS 045:   hosting an online community website featuring shared communications between community members interested in personal and business security

 

Scope Advisory: 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.

 

Applicant should note the following additional requirement.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and 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 fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

RESPONSE GUIDELINES

 

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. 

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Respond online to this letter.  Use the TEAS “Response to Office Action” online form to file a response

 

If Applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

RECOMMEND LEGAL COUNSEL: Because of the legal technicalities and strict deadlines involved in the USPTO application process, Applicant may wish to hire a private attorney specializing in trademark matters to represent Applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

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.

 

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.  

 

 

 

/Benjamin Roth/

Examining Attorney

Law Office 122

(571) 272-5266

Benjamin.roth@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 3/16/2019 FOR U.S. APPLICATION SERIAL NO. 88230315

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 3/16/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Benjamin Roth/

Examining Attorney

Law Office 122

(571) 272-5266

Benjamin.roth@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.