Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL OFFICE ACTION

 

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:  October 08, 2019

 

This Office action is in response to applicant’s communication filed on September 18, 2019.

 

The identification and classification requirement is now made FINAL for the reasons set forth below.  37 C.F.R. §2.63(b).

 

FINAL 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.  This requirement is now made FINAL. 

            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 performing employment searches; downloadable software for providing advice and articles in the field of personal development, career development, employment searches, relationship building, networking, career training, job training, salary information, and compensation and benefits; downloadable software for connecting individuals seeking employment, career development, or a career change with potential employers, recruiters, advisors, and mentors; downloadable software for facilitating communication between individuals seeking employment, career development, or a career change and potential employers, recruiters, advisors, and mentors; downloadable software for providing, tracking, and maintaining skill development, skill certifications, and job 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; Organizing and hosting business networking events.

 

International Class 036:  financial 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; financial 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; communication services, namely, transmitting and receiving text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, communication networks and the global information network.

 

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; Educational services, namely, conducting classes, seminars, conferences, and workshops in the field of career advice, best practices for employment searches, qualifying for desired employment, job search preparation, career skills training, salary information, and compensation and benefits.

 

International Class 042:  software as a service (SaaS) services featuring software for performing employment searches; providing a website featuring advice and articles in the field of personal development, career development, employment searches, relationship building, networking, career training, job training, salary information, and compensation and benefits; Software as a service (SaaS) services featuring software for connecting individuals seeking employment, career development, or a career change with potential employers, recruiters, advisors, and mentors; Software as a service (SaaS) services featuring software for facilitating communication between individuals seeking employment, career development, or a career change and potential employers, recruiters, advisors, and mentors; Software as a service (SaaS) services featuring software for providing, tracking, and maintaining skill development, skill certifications, and job certifications.

 

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).

 

Specifically, the highlighted identification language for software in International Class 009 is indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Here, applicant’s software “for providing advice and articles” is indefinite because it is not clear what function the software performs.  Rather, it appears that this listing refers to the service of providing information on particular topics.  Applicant must indicate with greater particularity what function the software performs. 

 

Similarly, it is unclear what function software for “facilitating communication” performs.  Is this software that enables users to send messages to one another via computer network, or is it software that teaches languages?  Applicant must indicate with greater particularity the function of the software. 

 

Additionally, 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).

 

In this case, the application originally identified the services as follows:

 

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.

 

 

However, the proposed amendment identifies the following services in International Class 038:  

 

communication services, namely, transmitting and receiving text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, communication networks and the global information network.

 

This portion of the proposed amendment is beyond the scope of the original identification because there was nothing in the original identification of services to indicate a telecommunications service offered broadly (and not to only those seeking employment assistance).

 

Finally, in International Class 042, the wording “providing a website featuring advice and articles…” is overly broad and indefinite as advisory or information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” -- International Class 035; “providing advisory services regarding financing and insuring an automobile” -- International Class 036; and “providing information and advice regarding the repair and maintenance of automobiles” -- International Class 037.

Here, the subject matter of the advisory and information services involves several different classes.  Specifically:

• personal development – International Class 045;
• career training – International Class 041;
• job training – International Class 041; and
• salary information and compensation and benefits in the nature of financial information in the field of employee financial benefit plans would be in International Class 036.

 

Other wording is indefinite.  “Career development” could refer to providing advice concerning education options to pursue career opportunities in International Class 041, or it could refer to providing career information in a particular field, which is in International Class 035.

 

“Employment searches” could refer to advisory services involving technology that enables computer searches for various employment (International Class 042) or providing employment information in International Class 035. 

 

“Relationship building” and “networking” would be classified based on what the relationship involves or the purposes of the networking.  If it is business networking services (building business relationships), the services would be in International Class 035.  If the services are more about social networking, then the services would be in International Class 045. 

 

Note that if the services are “prose presentations,” rather than advisory and information services, then they are considered entertainment services in International Class 041.  Similarly, if the wording is amended to indicate that the applicant is providing non-downloadable articles, then the services would be in International Class 041. 

 

 

            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 performing employment searches; downloadable software that _______ {specify the function of the software, e.g., enables users to track online publications that provide advice and enables users to post articles} in the field of personal development, career development, employment searches, relationship building, networking, career training, job training, salary information, and compensation and benefits; downloadable software for connecting individuals seeking employment, career development, or a career change with potential employers, recruiters, advisors, and mentors; downloadable software that ______ {specify the function of the software, e.g., enables users to ask and answer questions from other users} for facilitating communication between individuals seeking employment, career development, or a career change and potential employers, recruiters, advisors, and mentors; downloadable software for providing, tracking, and maintaining skill development, skill certifications, and job 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; Organizing and hosting business networking events.

 

International Class 036:  financial 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; financial 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; communication services provided to connect job and career mentors with those developing their job and career skills, namely, transmitting and receiving text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, communication networks and the global information network.

 

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; Educational services, namely, conducting classes, seminars, conferences, and workshops in the field of career advice, best practices for employment searches, qualifying for desired employment, job search preparation, career skills training, salary information, and compensation and benefits; providing a website featuring prose presentations and non-downloadable articles in the field of personal development, career development, employment searches, relationship building, networking, career training, job training, salary information, and compensation and benefits.

 

International Class 042:  software as a service (SaaS) services featuring software for performing employment searches; Software as a service (SaaS) services featuring software for connecting individuals seeking employment, career development, or a career change with potential employers, recruiters, advisors, and mentors; Software as a service (SaaS) services featuring software for facilitating communication between individuals seeking employment, career development, or a career change and potential employers, recruiters, advisors, and mentors; Software as a service (SaaS) services featuring software for providing, tracking, and maintaining skill development, skill certifications, and job 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.

 

This requirement is now made FINAL. 

           

Response Instructions

 

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

 

International Class 009:  downloadable software for providing advice and articles in the field of personal development, career development, employment searches, relationship building, networking, career training, job training, salary information, and compensation and benefits; downloadable software for facilitating communication between individuals seeking employment, career development, or a career change and potential employers, recruiters, advisors, and mentors.

 

International Class 038:  communication services, namely, transmitting and receiving text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, communication networks and the global information network.

 

International Class 042:  providing a website featuring advice and articles in the field of personal development, career development, employment searches, relationship building, networking, career training, job training, salary information, and compensation and benefits.

 

 

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

 

International Class 009:  downloadable software for performing employment searches; downloadable software for connecting individuals seeking employment, career development, or a career change with potential employers, recruiters, advisors, and mentors; downloadable software for providing, tracking, and maintaining skill development, skill certifications, and job 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; Organizing and hosting business networking events.

 

International Class 036:  financial 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; financial 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; Educational services, namely, conducting classes, seminars, conferences, and workshops in the field of career advice, best practices for employment searches, qualifying for desired employment, job search preparation, career skills training, salary information, and compensation and benefits.

 

International Class 042:  software as a service (SaaS) services featuring software for performing employment searches; Software as a service (SaaS) services featuring software for connecting individuals seeking employment, career development, or a career change with potential employers, recruiters, advisors, and mentors; Software as a service (SaaS) services featuring software for facilitating communication between individuals seeking employment, career development, or a career change and potential employers, recruiters, advisors, and mentors; Software as a service (SaaS) services featuring software for providing, tracking, and maintaining skill development, skill certifications, and job certifications.

 

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

 

Applicant may respond by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

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)

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 October 08, 2019 for

U.S. Trademark Application Serial No. 88240097

 

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. 

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 October 08, 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.”