To: | Josh Clawson (trademarks@cooley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88240097 - OX - N/A |
Sent: | 3/18/2019 1:57:43 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88240097
MARK: OX
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Josh Clawson
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/18/2019
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 Results
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
However, the applicant must address the identification and classification requirement detailed below.
Requirement – Identification and Classification
All identifications must be precise and identify the goods and/or services with particularity using common or commercial names. TMEP §1402.01.
Current Identification
Applicant’s current identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):
International Class 009: Downloadable software for use in career and job training and employment searches, career mentorship, skill development, skill and job certification, and recruitment of employees and communication regarding all of the foregoing.
International Class 035: Providing referrals and networking assistance to connect job and career mentors with those developing their job and career skills; providing employers referrals to job candidates; consulting with respect to career and job training and employment searches, career mentorship, skill development, skill and job certification, and recruitment of employees; hosting events with respect to best practices for employment searches, qualifying for desired employment and preparation for the same.
International Class 036: Provision of financial assistance with respect to tuition, funding for job training, certification and education, and the startup costs of finding a job; provision of financial compensation to career mentors.
International Class 042: Software as a service (SaaS) services featuring software for use in career and job training and employment searches, career mentorship, skill development, skill and job certification, and recruitment of employees and communication regarding all of the foregoing.
The identification is unacceptable as presently worded because certain goods and/or services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods and/or services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods and/or services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
Here, applicant has identified the field of use (e.g., “career mentorship”), but has not identified the particular function of the software with respect to that field. Applicant must clarify what functions the software performs with greater specificity.
The wording “consulting with respect to career and job training and employment searches, career mentorship, skill development, skill and job certification, and recruitment of employees” is unacceptable as some of the areas of consultation involve other international classes than International Class 042. Consulting regarding job training and mentorship (as an educational service) would be in International Class 041; consulting with regard to business networking would be in International Class 035, as would consulting regarding employment searches; consulting regarding testing or evaluating of the skills of others for conformation with certification standards would be in International Class 042. Therefore, applicant must clarify the nature of the services and classify them accurately. Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
Suggested Amendment
Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):
International Class 009: Downloadable software for _______ {specify the particular functions of the software, e.g., performing employment searches, identifying and introducing potential career mentors, tracking and maintaining career certifications}.
International Class 035: Providing referrals to connect job and career mentors with those developing their job and career skills; business networking services; providing employers referrals to job candidates; employment counseling and recruiting, namely, consulting with respect to employment searches and business networking in the nature of career mentorship.
International Class 036: Charitable services, namely, provision of financial assistance with respect to tuition, funding for job training, certification and education, and the startup costs of finding a job; charitable services, namely, provision of financial assistance for obtaining career mentors.
International Class 038: Providing chat room services for business networking to connect job and career mentors with those developing their career skills.
International Class 041: Consulting in the field of education, namely, in the field of job training; training in the field of best practices for employment searches and qualifying for desired employment.
International Class 042: Software as a service (SaaS) services featuring software for _______ {specify the particular functions of the software, e.g., performing employment searches, identifying and introducing potential career mentors, tracking and maintaining career certifications}.
Limitation on Amendments
While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
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.
Adding Classes
(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(s) already paid (view the USPTO’s current fee schedule). 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.
Response Guidelines
If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number or email address below. Applicant is encouraged to contact the examining attorney via email or telephone to make required changes to the application through an examiner’s amendment.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Andrea Hack/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 108
571-272-5413 (ph.)
andrea.hack@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.