To: | DN Marks LLC (brian@dicksnantonlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88290521 - SUCCESS ALMANAC - N/A |
Sent: | 3/12/2019 11:59:57 AM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88290521
MARK: SUCCESS ALMANAC
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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: DN Marks LLC
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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: 3/12/2019
The examining attorney apologizes for an error in the disclaimer portion of the prior action. The new version should be accurate. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
· Search of Office’s Database of Marks – No Conflicting Marks
SEARCH OF OFFICE’S DATABASE OF MARKS
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
The stated requirement refers to the following goods and services and does not bar registration for the other services: “Printed publications, namely, brochures, booklets, and teaching materials in the field of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest; A series of books and written articles in the field of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest” in Class 16 and “Providing a website featuring blogs and non-downloadable publications in the nature of electronic books, magazines, newsletters, and workbooks in the field(s) of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest; Providing a website featuring non-downloadable videos in the field of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest” in Class 41.
Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “ALMANAC” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a feature of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from American Heritage dictionary defines “almanac” as “A usually annual reference book composed of various lists, tables, and often brief articles relating to a particular field or many general fields”. Thus, the wording merely describes applicant’s services because they feature information or content in the field of finances to help consumers reach their wealth-based goals.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ALMANAC” as to Class 16 and the following services in Class 41, Providing a website featuring blogs and non-downloadable publications in the nature of electronic books, magazines, newsletters, and workbooks in the field(s) of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest; Providing a website featuring non-downloadable videos in the field of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest, apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant must clarify the wording “Education services, namely, providing on-line on-line classes, seminars, workshops, and personal coaching in the field of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest” in the identification of services for International Class 41 because it repeats the wording “online” seemingly erroneously. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
Class 41: Education services, namely, providing on-line classes, seminars, workshops, and personal coaching in the field of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest; Education services, namely, providing classes, seminars, workshops, and personal coaching in the fields of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest; Entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; Providing a website featuring blogs and non-downloadable publications in the nature of electronic books, magazines, newsletters, and workbooks in the field(s) of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest; Providing a website featuring non-downloadable videos in the field of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest.
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
The application will then proceed with the following services in International Classes 41 only: Education services, namely, providing classes, seminars, workshops, and personal coaching in the fields of personal development, health and lifestyle, financial planning, investing, retirement, fitness, travel, volunteering, and general interest; Entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content;. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Response Guidelines
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.
/Alexandra El-Bayeh/
Trademark Examining Attorney
Law Office 124
(571) 270-5911
alexandra.el-bayeh@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.