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: 4/22/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id. Any wording below in all CAPITALS has been added by the examiner to fix an issue. Underlined language is problematic for the reasons set out in parentheses. Any language that should be removed has been crossed through.

 

 

“Electronic databases in the field of genealogical historical data, family history data, census data, birth, marriage and death records, photographs and graphical representations of family trees recorded on computer media; RECORDED computer software for creating, managing, recording, searching, indexing, filtering and retrieving genealogical historical data, family history data, census data, and birth, marriage and death records; RECORDED computer software for creating, managing, recording, searching, indexing, filtering and retrieving sound and image files; computer software for use in creating, displaying, sharing and storing multimedia presentation files that include photographs and sound; RECORDED computer software for graphically depicting genealogical historical data and family history data; RECORDED computer software to enable searching of data and for connection to databases and the Internet; computer software that allows interaction between Internet sites; RECORDED computer software for production of genealogical tables and charts; downloadable electronic publications in the nature of magazines and newsletters in the field of genealogy and family history; downloadable reports, articles, bulletins, newsletters, tables, and charts relating to genealogical historical data, family history data, census data, and birth, marriage and death records; DOWNLOADABLE computer software for uploading, scanning, digitizing, viewing, organizing, sharing and editing photographs and for integrating photographs into genealogical databases and family trees; DOWNLOADABLE computer application software for mobile phones and handheld computers, namely, software for uploading, scanning, digitizing, viewing, organizing, sharing and editing photographs and for integrating photographs into genealogical databases and family trees; downloadable software in the nature of a mobile application for uploading, scanning, digitizing, viewing, organizing, sharing and editing photographs and for integrating photographs into genealogical databases and family trees; DOWNLOADABLE computer software for keeping track of genealogical information collected during family history and genealogical research and used to create reports, charts, and books containing such information; computer application software for mobile phones and handheld computers for researching and managing genealogical information collected during family history and genealogical research” in International Class 9 

 

 

 

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Any wording below in all CAPITALS has been added by the examiner to fix an issue. Underlined language is problematic for the reasons set out in parentheses. Any language that should be removed has been crossed through.

 

“Providing a searchable online computer database of historical information, historical news articles, and historical news clippings; providing an online resource center, namely, NON-DOWNLOADABLE online articles and papers in the fields of genealogy and family history; providing a website featuring NON-DOWNLOADABLE online publications in the nature of articles, journals, brochures, leaflets, guides and manuals in the fields of genealogy and family history; providing an online publication in the nature of an interactive encyclopedia in the fields of genealogy and family history” in International Class 41 

 

 

“Application service provider services featuring software for use in creating, displaying, sharing and storing multimedia presentations that include photographs and sound, all in the field of genealogy and family history; providing temporary use of non-downloadable computer software for use in creating, displaying, sharing and storing multimedia presentations that include photographs and sound, all in the field of genealogy and family history; providing temporary use of non-downloadable computer software that enables family groups to create and maintain personalized websites for the purpose of sharing information regarding family members; hosting of digital content on the Internet, namely, hosting on-line journals and blogs in the field of genealogy and family history; computer services, namely, hosting and maintaining an online website for others to access data, information, photo albums and calendars; providing temporary use of non-downloadable computer software for use in the creation and publication of on-line journals and blogs in the field of genealogy and family history; providing scientific analysis in the field of genetic and family history and genealogy; reporting services based upon the results of laboratory testing in the field of genetic and family history and genealogy; providing online computer databases featuring information based on the results of genetic testing for research purposes; application service provider services featuring software for providing access to databases that contain the results of genetic and family history testing; application service provider services featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the field of genetic and family history and genealogy; scientific research in the field of genetic and family history and genealogy; DNA testing services for non-medical use, namely, DNA testing for investigating and learning about genealogical and family history; hosting of digital content on the Internet, namely, hosting historical data and information and on-line journals and blogs in the field of historical data and information, genealogy and family history; computer services, namely, hosting and maintaining an online website for others to access and share information and data in the fields of historical data and information, genealogy and family history; providing temporary use of non-downloadable software for use in creating, displaying, sharing and storing information and data in the field of historical data and information, genealogy and family history;; providing temporary use of non-downloadable computer software that enables family groups to create and maintain personalized websites for the purpose of sharing information regarding family members (duplicate language); application service provider featuring software for uploading, scanning, digitizing, viewing, organizing, sharing and editing photographs and for integrating photographs into genealogical databases and family trees; providing temporary use of non-downloadable software applications for uploading, scanning, digitizing, viewing, organizing, sharing and editing photographs and for integrating photographs into genealogical databases and family trees; computer services, namely, hosting of digital content on the internet; peer-to-peer browser photo sharing services, namely, providing a website featuring technology enabling users to upload, view, and download digital photos; digitization of photographs and documents; computer services in the nature of DEVELOPING customized web pages featuring user-defined information and personal profiles; providing a web site WHICH ALLOWS USERS  temporary use of non-downloadable software for keeping track of genealogical information collected during family history and genealogical research and used to create reports, charts, and books containing such information; providing a website featuring resources, namely, non-downloadable software for keeping track of genealogical information collected during family history and genealogical research and used to create reports, charts, and books containing such information” in International Class 42 

 

 

“Provision of genealogical information, namely, provision of educational, research and historical tables of genealogical information; providing genealogical information, namely, family history information services, namely, retrieving, recording and reviewing ancestral data via the global computer network; providing an on-line computer database in the field of genealogy information and family history information; providing an online resource center featuring information in the field of genetic and family history and genealogy; provision of information in the field of personal historical data and information, genealogy and family history; provision of information resulting from educational research in the field of personal historical data and information, genealogy and family history; providing genealogical information, namely, family history information services in the nature of retrieving, recording and reviewing ancestral data via the Internet; providing an on-line computer database in the field of personal historical data and information, genealogy information and family history information; genealogical services, namely, genealogy and family history research, provided via the Internet; genealogical services, namely, genealogy research, provided via the Internet; online social networking services in the field of genealogy and family history” in International Class 45

 

 

In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. For example, “financial services” is a common commercial term, but is too indefinite, needing to be replaced with the names of individual services, such as “mutual fund investment” or “financial consulting”.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name.  See TMEP §1402.03(a). Any wording below in all CAPITALS has been added by the examiner to fix an issue. Underlined language is problematic for the reasons set out in parentheses. Any language that should be removed has been crossed through. 

 

AMENDING GOODS AND SERVICES

 

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).

 

 

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 CLASSES

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b) :

 

(1)  Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)  Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

 

 

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.   

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

 

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.  

 

 

 

/lindamickleburgh/

Linda Mickleburgh

Examining Attorney

Law Office 106

linda.mickleburgh@uspto.gov

571-272-9198

 

 

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 4/22/2019 FOR U.S. APPLICATION SERIAL NO. 88302602

 

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 4/22/2019 (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.