Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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 11, 2020

 

 

INTRODUCTION

 

On January 30, 2020, action on this application was suspended pending disposition of cited U.S. Registration No. 4427319, for which maintenance documents were due to be filed.  See 37 C.F.R. §2.67; TMEP §716.02(e).  USPTO records indicate that the cited registration has been cancelled and/or expired and is no longer a bar to registration of applicant’s mark.  Therefore, the Section 2(d) refusal is withdrawn with respect to this particular registration.

 

Additionally, in a previous Office action(s) dated April 9, 2019, applicant was required to satisfy the following requirement(s):  amend the identification of services.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirement(s) 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

 

 

IDENTIFICATION OF SERVICES

 

Based on applicant’s response dated October 8, 2019, the requirement for applicant to amend the identification of services is now made FINAL for the reasons set forth below.  37 C.F.R. §§2.32(a)(6), 2.63(b); TMEP §1401, 1402.

 

The wording “presentation of goods on communication media, for retail purposes” in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Suggestions documented below.

 

Further, particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the U.S. application originally identified the services as follows:  “presentation of goods on communication media, for retail purposes.”

 

However, the proposed amendment to the U.S. application identifies the following goods and/or services:  “arranging commercial transactions, for others, via online shops.”  

 

This portion of the proposed amendment is beyond the scope of the original identification because the proposed services do not appear in the original application, and are not encompassed within any of the wording in the original application.

 

In addition, the word “sale” in the identification of services in International Class 35 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” normally refers to selling one’s own goods or services and is not a registrable service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.

 

Therefore, applicant must delete “sale(s)” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring bicycles, electrical machinery and apparatus, kitchen equipment, cleaning tools and washing utensils, cosmetics, toiletries, dentifrices, soaps and detergents, paper and stationery, sports goods, photographic machines and apparatus and photographic supplies, woven fabrics and bedding, food and beverages, processed food, musical instruments and records, clocks and watches, spectacles, eyeglasses, and goggles, building materials,” “wholesale distributorships featuring bicycles, electrical machinery and apparatus, kitchen equipment, cleaning tools and washing utensils, cosmetics, toiletries, dentifrices, soaps and detergents, paper and stationery, sports goods, photographic machines and apparatus and photographic supplies, woven fabrics and bedding, food and beverages, processed food, musical instruments and records, clocks and watches, spectacles, eyeglasses, and goggles, building materials,” and “on-line wholesale and retail store services featuring bicycles, electrical machinery and apparatus, kitchen equipment, cleaning tools and washing utensils, cosmetics, toiletries, dentifrices, soaps and detergents, paper and stationery, sports goods, photographic machines and apparatus and photographic supplies, woven fabrics and bedding, food and beverages, processed food, musical instruments and records, clocks and watches, spectacles, eyeglasses, and goggles, building materials.”  Suggestions documented below.

 

Furthermore, applicant has classified the following services in International Class 35:  “management of buildings; agency services for the leasing or rental of buildings; rental of buildings; purchase and sale of buildings; agency services for the purchase or sale of buildings; real estate appraisal; providing real estate information; land management; agency services for the leasing or rental of land; leasing of land; purchase and sale of land; agency services for the purchase or sales of land.”  However, the proper classification for each item is as follows: 

 

Class 36:  management of buildings; agency services for the leasing or rental of buildings; rental of buildings; purchase and sale of buildings; agency services for the purchase or sale of buildings; real estate appraisal; providing real estate information; land management; agency services for the leasing or rental of land; leasing of land; purchase and sale of land; agency services for the purchase or sales of land

 

Additionally, applicant has provided the application fee(s) for only one international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate (suggested changes in bold):  

 

Class 35:  Advertising and publicity services; online advertising on a computer network; presentation of goods on communication media, for retail purposes, arranging commercial transactions, for others, via online shops; presentation of goods of others for retail purposes via the Internet, namely, retail store services featuring a wide variety of consumer goods of others; providing television home shopping services in the field of general consumer merchandise; rental of advertising space; commercial information and advice for consumers in the choice of products and services; marketing research or analysis; provision of information concerning commercial sales; commercial intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods and services; compilation of information into computer databases; Retail or wholesale sale of store services featuring bicycles, electrical machinery and apparatus, kitchen equipment, cleaning tools and washing utensils, cosmetics, toiletries, dentifrices, soaps and detergents, paper and stationery, sports goods, photographic machines and apparatus and photographic supplies, woven fabrics and bedding, food and beverages, processed food, musical instruments and records, clocks and watches, spectacles, eyeglasses, and goggles, building materials; business consultancy and business information services provided for the electric energy industry in relation to electric consumption; management of buildings; agency services for the leasing or rental of buildings; rental of buildings; purchase and sale of buildings; agency services for the purchase or sale of buildings; real estate appraisal; providing real estate information; land management; agency services for the leasing or rental of land; leasing of land; purchase and sale of land; agency services for the purchase or sales of land

 

Class 36:  management of buildings; agency services for the leasing or rental of buildings; rental of buildings; purchase and sale of buildings; agency services for the purchase or sale of buildings; real estate appraisal; providing real estate information; land management; agency services for the leasing or rental of land; leasing of land; purchase and sale of land; agency services for the purchase or sales of land

 

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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 – ADVISORY

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the 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 two classes; however, applicant submitted a fee(s) sufficient for only one 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

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How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Chioma (Bata) Oputa/

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 11, 2020 for

U.S. Trademark Application Serial No. 88281362

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Chioma (Bata) Oputa/

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 11, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”