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:  August 16, 2020.

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 13, 2020.

 

In a previous Office action dated March 19, 2019, applicant was required amend the identification of services.  Applicant’s amended identification of services in International Class 036 are acceptable and entered into the record.

 

On September 25, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87413936.  The suspension is lifted, and the cited application is no longer being considered as a potential bar to the registration of applicant’s mark.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Amended Identification of Services Requirement

 

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

 

Applicant must clarify the wording “providing co-working facilities” in the identification of services in International Class 035 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, rental of office equipment in co-working facilities is in International Class 035 and rental of offices for co-working is in International Class 036.

 

Additionally, the wording “in the field of unleashing new ideas” in the identification of services in International Class 041 is indefinite and must be clarified because the wording is vague and redundant in light of the preceding identified fields of subject matters.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording with amended language shown in bold, if accurate:

 

 

International Class 035:

 

“Providing facilities for the use of office equipment, namely, providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; Providing business information; Incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies; Business development services, namely, providing start-up support for businesses of others; Providing office functions support services; Online business networking services; Business management and organization consultancy; Business data analysis; Market analysis; Market analysis and research services; Real estate marketing analysis; Providing electronic tracking of real estate assets to others for business purposes; Planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties for business purposes; Providing office support staff services; Business project management services for others; Business consulting services in the field of spatial management to optimize business process efficiency and decision-making; Computer-aided optimization and management, namely, managing logistics and physical spaces for business purposes; Retail convenience stores, on-line retail convenience stores, and providing an on-line searchable database for the sale of goods and services of others; Providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; Gift and sundries retail store services; Advertising services; Business management; Business administration; Providing office functions”

 

International Class 036:

 

            “Real estate management services; real estate leasing; leasing of office space; real estate renting of apartments, condominiums and office space; real estate brokerage; Rental of offices for co-working featuring facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities”

 

International Class 041:

 

“Educational services, namely, conducting educational seminars, conferences, workshops, lectures, and webcasts, and providing ongoing television shows, podcasts, and radio programs, all in the field of technology, entertainment, design, business science, culture, arts, global issues, economics, the environment, politics, the humanities, leadership, public policy, social issues, and cultural issues for the purpose of unleashing new ideas; Educational services, namely, developing curriculum for teachers; Educational services in the nature of operating an educational institution in the field of computer programming and computer coding; Educational services in the nature of operating an educational institution providing kindergarten through grade 5 classroom instruction; Educational services, namely, providing kindergarten through grade 5 classroom instruction; Educational services in the nature of operating an educational institution providing grade 6 through grade 12 classroom instruction; Educational services, namely, providing grade 6 through grade 12 classroom instruction; Entertainment services, namely, providing podcasts in the field of technology, entertainment, design, business science, culture, arts, global issues, economics, the environment, politics, the humanities, leadership, public policy, social issues, and cultural issues for the purpose of unleashing new ideas”

 

 

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

 

 

ASSISTANCE

 

Please email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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).

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 August 16, 2020 for

U.S. Trademark Application Serial No. 88254028

 

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. 

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 August 16, 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.”