To: | Stay in the Game (marin@cioncaip.com) |
Subject: | U.S. Trademark Application Serial No. 88273712 - STAY IN THE GAME - TM-MAndrews |
Sent: | October 26, 2019 07:41:35 AM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88273712
Mark: STAY IN THE GAME
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Correspondence Address: |
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Applicant: Stay in the Game
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Reference/Docket No. TM-MAndrews
Correspondence Email Address: |
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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: October 26, 2019
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.
PARTIAL FINAL REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF SERVICES
“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].” In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
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).
The applicant has applied to register the mark for, as amended:
IC 35: Business process outsourcing services, namely, vendor management services for the purpose of managing the vendors of other businesses, accounts receivable billing services, telephone answering services, account management, namely, business management of individual clients' accounts, customer service support, namely, customer service management for others, student internship placement coordinator services, namely, internship placement services, student support services provided on behalf of academic institutions, business data analysis and business project management services
Applicant may adopt the following wording, if accurate:
IC 35: Business process outsourcing services, namely, vendor management services for [clarify the types of businesses for which the vendor management services are provided, e.g., academic institutions—the phrase “for the purpose of managing the vendors of other businesses” is duplicative and does not provide the necessary information], accounts receivable billing services, telephone answering services, account management, namely, business management of individual clients' accounts, customer service support, namely, customer service management for others, student internship placement coordinator services, namely, internship placement services, [clarify “student support services provided on behalf of academic institutions”, being sure that it fits within the scope of “student success counseling”, or delete], business data analysis and business project management services
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.
PARTIAL ABANDONMENT ADVISORY
If applicant does not respond to this Office action within the six-month period for response, the services objected to above will be deleted from the application. The application will then proceed with the following services only:
IC 35: Accounts receivable billing services, telephone answering services, account management, namely, business management of individual clients' accounts, customer service support, namely, customer service management for others, student internship placement coordinator services, namely, internship placement services, business data analysis and business project management services
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSES TO FINAL OFFICE ACTIONS
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)
/Nancy L. Clarke/
Examining Attorney
Law Office 102
Tel. (571) 272-9253
E-mail: nancy.clarke@uspto.gov
ADDITIONAL RESPONSE GUIDANCE