To: | International Animal Semen Bank, Inc. (trademark@aterwynne.com) |
Subject: | U.S. Trademark Application Serial No. 88273691 - ICSB - 107268-0012 |
Sent: | September 08, 2019 01:32:00 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88273691
Mark: ICSB
|
|
Correspondence Address: |
|
Applicant: International Animal Semen Bank, Inc.
|
|
Reference/Docket No. 107268-0012
Correspondence Email Address: |
|
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: September 08, 2019
This Office action is in response to applicant’s communication filed on August 20, 2019.
In a previous Office action dated April 4, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Partial Specimen Refusal. In addition, applicant was required to satisfy the following requirements: Identification Requirement, Multiple Class Application Requirement.
The examining attorney notes that applicant’s response has obviated the previously issued Partial Specimen Refusal.
Further, the trademark examining attorney maintains and now makes FINAL the requirements 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 REQUIREMENT
Applicant was previously required to submit a definite Identification of Goods and Services. Applicant was provided a suggested Identification that applicant did not adopt; applicant likewise did not submit a definite alternative. Therefore, for the reasons discussed below, the previously issued Identification Requirement is continued and made FINAL.
Applicant may substitute the following wording, if accurate:
Class 10: cryopreservation kits for use in the artificial insemination of dogs, consisting primarily of a sperm collection container, sperm freezing medium, an artificial insemination kit consisting primarily of a syringe, connector, insemination rod, and lubricant
Class 35: franchise services, namely, business management assistance with the establishment of canine semen banks; franchise services, namely, commercial administration of the licensing of canine semen banks
Class 41: franchise services, namely, training of proprietary semen collection and insemination techniques
Class 44: Canine sperm banks
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.
MULTIPLE CLASS APPLICATION REQUIREMENT
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and services based on use in commerce that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 3 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 10, 35, and 44; and applicant needs a specimen for class 41. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant was previously required to restrict the application to the classes the application covered or to add appropriate classes. Applicant did neither. Therefore, this requirement is continued and made FINAL.
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 requirements 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.
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 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)
/Teague Avent/
Teague Avent
Examining Attorney
Law Office 125
(571) 272-1219
teague.avent@uspto.gov
RESPONSE GUIDANCE