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: 6/11/2019

 

 

THIS IS A FINAL ACTION.

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 21, 2019.

 

In a previous Office action dated April 8, 2019, applicant was required to satisfy the following requirement: amend the identification of services.

 

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:

• Identification of Services Requirement
• Response and Partial Abandonment Advisory  

 

IDENTIFICATION OF SERVICES REQUIREMENT

 

Applicant’s amended identification reads as follows:

 

“Vessel agency services in the nature of coordinating port calls; vessel agency services in the nature of arranging for the supply and provisions for vessels and crew; vessel agency services in the nature of arranging for the provision of services for vessels and crew; vessel agency services in the nature of organizing the supply, transport and handling of cargo; business services, namely, the coordination of and arranging for vessel-related services on behalf of seafaring clients while in port; vessel husbandry, namely, the coordination of an arranging for vessel-related services for others while in port; business administration services relating to vessel and cargo documentation; administrative services relating to customs clearance; purchasing and procurement services, namely, procuring of goods and services on behalf of for vessel owners, charterers and cargo owners during port-calls for vessels, cargos and crew; business operation of port and terminal facilities; business operation of port and terminal facilities for others; business services, namely, sourcing and buying services for others relating to vessels, cargo and crews during port-calls; import and export agency services” in International Class 35, and

 

“Transportation of goods, namely, coordination and arranging for vessel-related services” in International Class 39.

 

In International Class 35, the identifications of “Vessel agency services in the nature of coordinating port calls; vessel agency services in the nature of arranging for the supply and provisions for vessels and crew; vessel agency services in the nature of arranging for the provision of services for vessels and crew; vessel agency services in the nature of organizing the supply, transport and handling of cargo” are indefinite because it is unclear that the provided services are business services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Further, the identification of “vessel agency services in the nature of arranging for the provision of services for vessels and crew” is indefinite because applicant has not specified what services are arranged, for example, bunkering services, inspection and repair of vessels, and waste disposal services by others.

 

And, the identification of “business operation of port and terminal facilities” does not appear to be a service applicant provides to third parties. Specifically, because the following identification is “business operation of port and terminal facilities for others”, it appears that the identification of “business operation of port and terminal facilities” is an activity applicant performs solely for its own benefit. In order for the identification to be considered a service, the “activity must be primarily for the benefit of someone other than the applicant.” TMEP §1301.01(a)(ii). Accordingly, applicant should delete this entry.

 

Finally, the identification of “Transportation of goods, namely, coordination and arranging for vessel-related services” in International Class 39 is indefinite because applicant has not specified the type of transportation services provided.

 

Applicant may adopt the following, if accurate:

 

International Class 35:

 

Vessel agency services, namely, providing business services to owners of vessels in the nature of coordinating port calls, arranging for the supply and provisions for vessels and crew, arranging for the provision of {bunkering services, inspection and repair of vessels, and waste disposal services by others} services for vessels and crew, and arranging for the supply, transport and handling of cargo; business services, namely, the coordination of and arranging for vessel-related services on behalf of seafaring clients while in port; vessel husbandry, namely, the coordination of an arranging for vessel-related services for others while in port; business administration services relating to vessel and cargo documentation; administrative services relating to customs clearance; purchasing and procurement services, namely, procuring of goods and services on behalf of for vessel owners, charterers and cargo owners during port-calls for vessels, cargos and crew; business operation of port and terminal facilities for others; business services, namely, sourcing and buying services for others relating to vessels, cargo and crews during port-calls; import and export agency services

 

International Class 39:

Coordination and arranging vessel-related services, namely, arranging, coordinating, and controlling {specify the class 39 service provided, e.g. transportation, loading and unloading, transfer and storage of goods}

 

Identification Amendment Advisories

 

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 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.

 

RESPONSE AND PARTIAL ABANDONMENT ADVISORY:

 

 Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment: “Vessel agency services in the nature of coordinating port calls; vessel agency services in the nature of arranging for the supply and provisions for vessels and crew; vessel agency services in the nature of arranging for the provision of services for vessels and crew; vessel agency services in the nature of organizing the supply, transport and handling of cargo” and “business operation of port and terminal facilities” in International Class 35, and “Transportation of goods, namely, coordination and arranging for vessel-related services” in International Class 39.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following services: 

 

International Class 35:

Business services, namely, the coordination of and arranging for vessel-related services on behalf of seafaring clients while in port; vessel husbandry, namely, the coordination of an arranging for vessel-related services for others while in port; business administration services relating to vessel and cargo documentation; administrative services relating to customs clearance; purchasing and procurement services, namely, procuring of goods and services on behalf of for vessel owners, charterers and cargo owners during port-calls for vessels, cargos and crew; business operation of port and terminal facilities for others; business services, namely, sourcing and buying services for others relating to vessels, cargo and crews during port-calls; import and export agency services

 

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

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

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.  

 

 

 

/Rebecca Eubank/

Trademark Examining Attorney

Law Office 116

Phone: (571) 270-5577

Rebecca.eubank@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 6/11/2019 FOR U.S. APPLICATION SERIAL NO. 88266728

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/11/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.