To: | E-Myth Worldwide, Inc. (jscher@carrferrell.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88266015 - EMYTH - T-4329 US |
Sent: | 3/29/2019 4:24:15 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88266015
MARK: EMYTH
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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: E-Myth Worldwide, Inc.
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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: 3/29/2019
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, the applicant shall note the following requirements:
INDEFINITE IDENTIFICATION OF SERVICES
The wording “educational services, namely, conducting distance learning instruction in the fields of business, business management, entrepreneurship, leadership; business systems and processes” in the identification of services is indefinite and must be clarified because of the semi colon after “leadership”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: educational services, namely, conducting distance learning instruction in the fields of business, business management, entrepreneurship, leadership, business systems and processes.
International Class 42
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. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
The applicant may adopt the following identification:
“Downloadable audio recordings in the nature of podcasts and educational programs in the field of business,” in International Class 9;
“Business consultation; providing business consultation services via electronic networks; providing business consultation for personal and business issues of entrepreneurship; providing business consultation in the fields of the operation of small businesses and the development, implementation, and documentation of business systems and processes; provision of information and websites in the fields of business, business consultation, business management, entrepreneurship, and leadership; online business directories featuring listings of business consultants, business coaches, and other providers of services for businesses and entrepreneurs; providing on-line directory information services also featuring hyperlinks to other websites; providing links to websites of others featuring business information providing referral services to business coaches, entrepreneurs, and small business owners,” in International Class 35;
“Providing one-on-one telephonic and video conference instruction in the fields of business, business management, entrepreneurship, leadership, business systems, processes, and the implementation of these; training services in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; computer-based and online courses in the fields of business, business management, entrepreneurship, and leadership; educational services, namely, conducting distance learning instruction in the fields of business, business management, entrepreneurship, leadership, business systems and processes; educational services, namely, conducting classes, seminars, conferences, workshops and individual training sessions in the fields of business, business management, entrepreneurship, and leadership in person, by telephone, and via computer and communication networks; providing websites featuring information in the fields of professional coaching in the field of business, business management, entrepreneurship, leadership, business systems, and processes; on-line journals, namely, blogs, podcasts and videos in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; professional coaching of business owners in the field of business, business management, entrepreneurship, leadership, business systems and processes; professional coaching of business owners in the fields of business expansion, selling a business, starting a business, improving a business, leadership, business management, marketing, finances, client fulfillment, new client generation, and converting new clients into long-standing client relationships; professional coaching of business owners in the field of business via electronic networks; education courses and training services for business coaches in the field of business; providing online, non-downloadable videos in the fields of business, business education, business coaching, entrepreneurship, leadership, business systems, and processes,” in International Class 41 and
“Providing temporary use of non-downloadable software for business planning and analysis; providing a web site featuring technology that enables internet users to share documents for business owners and entrepreneurs for use in business planning and analysis, and growing their businesses as part of a business coaching program; providing a web site featuring technology that enables internet users to share documents for business owners and entrepreneurs relating to work in their business, business management, entrepreneurship, leadership, business systems, and processes; technical support for online computer software and websites, namely, troubleshooting of computer software problems; providing a web hosting platform for virtual workspaces for collaboration, communication, document exchange, completion of assignments, sharing of work product, and planning and execution of coaching and educational plans; creating and hosting websites and microsites for business coaches; providing a web hosting platform for online community websites for business coaches, entrepreneurs, and small business owners,” in International Class 42.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(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). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). 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.
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
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.
/Jennifer Button/
Trademark Examining Attorney
Law Office 105
571-272-8279
Fax 571-273-8279
jennifer.button@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.