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: 3/31/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Prior Pending Application
• Identification of Services Requirement

 

PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88145628 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Ownership of Potentially Conflicting Application

 

If the mark in the potentially conflicting prior-filed application has been assigned to applicant, applicant may provide evidence of ownership of the mark to avoid a possible refusal under Trademark Act Section 2(d) based on a likelihood of confusion.  See 15 U.S.C. §1052(d); TMEP §812.01. 

 

Applicant may provide evidence of ownership of the mark by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)       Submit copies of documents evidencing the chain of title.

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of Application Serial No. 88145628.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that  “Applicant is the owner of Application Serial No. 88145628,” inserting the relevant application serial number; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

 

IDENTIFICATION OF SERVICES REQUIREMENT

 

The wording “appare” in the identification of services appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate: 

 

International Class 42:  Analysis of the mode of action of chemical combinations on animals; Chemical analysis; Chemical, biochemical, biological and bacteriological research and analysis; Design of interior decor; Design of specialty interior and exterior environment settings; Design services for packaging; Design sketching of packaging, containers, dinnerware and table utensils; Designing of packaging and wrapping materials; Geological research; Geological estimations and research; Geological surveys and research; Interior design; Interior design consultation; Interior design services; Interior design services in the nature of aroma consulting services in the selection and use of aromas for hotels, casinos, resorts, conference facilities, retail stores, sports and fitness centers, spas, health care facilities, residential buildings and private residences; Interior design services including space planning, furniture selection, material and surface selection; Packaging design; Packaging design for others; Research and development in the pharmaceutical and biotechnology fields; Research and development of computer software; Research and development of environmentally friendly forms of energy and power; Research and development of new products; Research and development of new products for others; Research and development of new products for third parties in the field of plastic materials; Research and development of pharmaceuticals for the treatment of age-related diseases and cancer; Research and development of vaccines and medicines; Research and development services in connection with physics; Research and development services in the field of antibodies; Research in the field of child and adolescent development; Research, development and engineering services in the fields of isotope separation and enrichment of uranium; Research, development, design and upgrading of computer software; Research, development, engineering and testing services in the fields of immunopharmaceuticals and vaccines; Research, development, engineering and testing services in the fields of welding and material joining; Authenticating coins; Biochemical research and development; Biological cloning services; Collaborative computer programming for others in the nature of hackathons; Color analysis for purposes of interior design; Computer co-location services, namely, providing facilities for the location of computer servers with the equipment of others; Computer network design for others; Computer programming; Computer services, namely, creating computer network-based indexes of information, websites and resources; Computer services, namely, hosting on-line interactive public calendars that allow multiple participants to share event schedules and facility reservations; Computer services, namely, monitoring and reporting on the performance, availability, and errors of web sites of others; Computer services, namely, monitoring the web sites of others to improve their scalability and performance; Computer services, namely, monitoring, testing, analyzing, and reporting on the Internet traffic control and content control of the web sites of others; Computer services, namely, providing customized web pages featuring user-defined information; Computer site design; Computer software consultancy; Computer systems analysis; Computer virus protection services; Conducting engineering surveys; Consultancy in the design and development of computer hardware; Consulting services in the field of mining exploration; Consulting services in the fields of biotechnology, pharmaceutical research and development and genetic science; Consulting services in the fields of biotechnology, pharmaceutical research and development, laboratory testing, diagnostics, and pharmacogenetics; Consulting services in the fields of selection, implementation and use of computer hardware and software systems for others; Creating and maintaining web sites for others; Crop scouting services in the nature of scientific analysis of pest infestation and crop performance to determine the potential effectiveness of pest control measures; Custom design of wearable apparel based on personal selections made by the customer; Database development services; Dental research; Design of home pages and web sites; Design of integrated circuits; Designing and creating web sites for others; Environmental testing and inspection services; Evaluating organizations to determine whether the organizations conform to an established accreditation standard; Evaluation of the home building and remodeling services of home builders and remodelers to determine conformity with certification standards other than for governmental regulatory purposes during construction; Executing of chemical analyses; Gas exploration; Handwriting analysis; Home staging consultation, namely, temporary interior and exterior home decoration consultation for the purpose of making homes more appealing to prospective buyers; Inspecting food establishments to determine whether foods conform to kosher quality certification standards; Inspecting foods to determine whether the goods conform to kosher quality certification standards; Maintenance of computer software; Measuring television audience size and composition for others via electronic data collection; Medical and scientific research in the field of cancer treatment and diagnosis; On-line batch computer services, namely, configuration of multiple files into a single group; On-line web site that enables the management of print systems of others by providing technical maintenance and performance reports based on data provided by users; Outsource service provider in the field of information technology consulting; Outsource service providers in the field of information technology; Performance of chemical analyses; Pharmaceutical research and development; Photogrammetry services; Planning and designing aquatics facilities; Product research and development; Product research and development services for others in the fields of food products and menus; Providing a secure, web-based service featuring technology that enables individuals to remotely create and manage their own accounts so that whatever private content they upload now can be encrypted, then delivered to their intended recipients, at the time and in the manner requested; Providing a web site that features information on beach science; Providing a web site that features information on computer technology and programming; Providing a website featuring information about green architecture, interior design, sustainable community planning and infrastructure development; Providing a website featuring information about investigational medical devices, diagnostics and drugs; Providing a website featuring information in the field of interior design; Providing a website featuring information in the field of interior design and architecture for use by interior designers and architects; Providing a website featuring on-line non-downloadable software tools for image editing; Providing graphic design services to create specialty interior environment settings; Providing on-line, non-downloadable, Internet-based software application for medical billing for physicians and health care institutions; Providing temporary use of on-line non-downloadable software development tools; Providing weather information; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Provision of technical information in the field of interior design; Psychological research; Recovery of computer data; Rental of computers and software; Rental of smartwatches; Rental of web servers; Research and development of advanced learning technologies and teaching methods; Scientific research and development; Scientific research in the fields of QiGong and other personal energetic development systems; Scientific and technological services, namely, research and design in the field of integrated system architecture that allows for the rapid development of highly interactive and customizable learning applications; Scientific investigations for medical purposes; Shop interior design; Software porting; Soil percolation testing; Structural and functional analysis of genomes; Technical consulting in the field of interior design; Technical consulting in the field of pharmaceutical studies; Technical research in the field of pharmaceutical studies; Telecommunications technology consultancy; Testing of computer software; Testing of computers; Testing, analysis and evaluation of service providers to determine conformity with established accreditation standards; Testing, analysis and evaluation of the goods and services of others to determine conformity with certification standards; Testing, analysis and evaluation of the goods of others to determine conformity with certification standards; Testing, analysis and evaluation of the services of others to determine conformity with certification standards; Testing, inspection, research, or development of pharmaceutical preparations for gene therapy; Toy design; Urban planning; Visual home inspection services for sellers and purchasers of residential and commercial properties; Web site hosting services; Working on and evaluation of chemical analyses

 

Scope Advisory

 

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).

 

ID Manual Online

 

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

 

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. 

 

Response guidelines.  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.

 

Applicant May Wish to Seek Trademark Counsel

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. 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 or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

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.  

 

 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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 3/31/2019 FOR U.S. APPLICATION SERIAL NO. 88263259

 

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 3/31/2019, 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. 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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.