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:  October 28, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 18, 2019.

 

In a previous Office action dated March 29, 2019, the applicant was required to satisfy the following requirement:  amend the identification of services.

 

Applicant’s amended mark description is acceptable and entered into the record.

 

Based on applicant’s response, 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:

• Amended Identification of Services Requirement – Classes 035, 042, and 043
• Filing Basis Advisory

 

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED – CLASSES 035, 042, AND 043

 

Particular wording in applicant’s amended identification of services is indefinite and requires further amendments because the Class 035 work space services must specify the provision of business equipment as the primary feature, the Class 042 design services must clarify that the services relate to interior design, and the Class 043 hospitality services must clarify the nature of the food and beverage services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Additionally, applicant is advised to delete or modify the duplicate entry in the identification of services in International Classes 035 for “providing office support staff services,” and 042 for “Planning and layout design services for interior space of business establishments” and “Data mining.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

Applicant may substitute the following wording with amended language shown in bold, if accurate:

 

 

International Class 035:

 

“Incubation services, namely, providing office space containing business equipment to emerging, start-up and existing companies; Providing facilities for business meetings and business events; Business operation of commercial real estate, offices and office space for others; Business operation of commercial real estate, offices and office space for others, namely, shared office venues with conference facilities; Providing office-share services in the nature of providing facilities for the use of office equipment and machinery; Incubation services in the nature of providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits, namely, providing co-working facilities equipped with private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; Business information services; Providing work space containing primarily business equipment and also other amenities to emerging, start-up and existing companies; Business development services in the nature of providing start-up support for businesses of others; Providing office support staff services; Providing office functions support services; Online business networking services; Business negotiation with providers of insurance, banking, credit card processing, travel and transportation services, to enable participant members of a business community to obtain discounts on the purchase of those services from others; Computer assisted business information and research services; Assistance and advice regarding business location; Arranging and conducting special events, parties, camps, and concerts for advertising and promotional purposes; Providing career placement services and providing on-line employment information in the field of careers, job listings, job resources and resumes; Job placement; Personnel placement and recruitment; Providing on-line employment placement services in the nature of matching resumes and potential employers; Providing career information; Business networking services; Business consultation services in the nature of office space design; Business management and organization consultancy; Real estate marketing analysis; Providing electronic tracking of real estate assets to others for business purposes; Planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties for business purposes; Business project management services for others; Business consulting services in the fields of spatial layout and infrastructure architecture and interior design; Business consulting services in the field of spatial management to optimize business process efficiency and decision-making; Computer-aided optimization and management, namely, managing logistics and physical spaces for business purposes; Retail convenience stores, on-line retail convenience stores and providing an on-line searchable database for the sale of goods and services of others; Providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; Gift and sundries retail store services”

 

 

International Class 042:

 

“Architectural design; Interior design services; Design of specialty interior and exterior environment settings; Graphic design services; Industrial design services; Engineering services for building and property condition assessment, facility management, repair and restoration and building instrumentation; Interior design services, namely, information and data analysis relating to planning and laying out design for the interior space and fixtures of buildings and offices; Planning of buildings and infrastructure systems for buildings; Non-downloadable computer software platform for the purposes of monitoring, analyzing and controlling environmental conditions and devices within a building, facility, grounds of designated spatial area and providing information to manage activities in the area; Non-downloadable computer software platform for the purposes of facilities management users to control building environment, access and security systems; Non-downloadable computer software platform and software as a service (SAAS) for the purposes of spatial mapping of floor plans and fixtures; Non-downloadable computer software platform and software as a service (SAAS) for the purposes of management of spatial information for the purpose of space optimization within a building or other facility; Non-downloadable computer software platform and software as a service (SAAS) for the purposes of visualization, animation and analytics of spatial data; Non-downloadable software platform and software as a service (SAAS) for managing a pipeline of real estate deals and assets of others; Non-downloadable software platform and software as a service (SAAS) for administering leases, tracking lease negotiations and tracking lease documentation; Non-downloadable software platform and software as a service (SAAS) for administering and managing co-working facilities; Non-downloadable software platform and software as a service (SAAS) featuring technology enabling users to remotely view, monitor, program, operate and control electrical systems and security systems in offices; Planning and layout design services for interior space of business establishments; Data mining; Providing a website featuring technology enabling users to remotely view, monitor, program, operate and control electrical systems and security systems in offices; Non-downloadable visitor registration computer software that records entry and exit of visitors and collects visitor information; Non-downloadable visitor registration computer software that enables preparation and distribution of signed electronic visitor registration documents; Non-downloadable visitor registration computer software that enables the printing of visitor badges with photos; Non-downloadable visitor registration computer software that notifies others of the arrival of a visitor; Non-downloadable visitor registration computer software that prepares reports of visitors”

 

International Class 043:

 

“Hospitality services, namely, providing temporary accommodations; Hospitality services, namely, providing of food and beverage; Providing meeting room space; Restaurant and cocktail lounge services”

 

 

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 services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

FILING BASIS ADVISORY

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  The application additionally includes a statement indicating that applicant does not intend to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03.  Accordingly, the mark may be approved for publication on the Section 1(b) basis, but it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

 

ASSISTANCE

 

If applicant has any questions regarding this Office action, please call or email the assigned trademark examining attorney.  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/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.  

 

 

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)

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 October 28, 2019 for

U.S. Trademark Application Serial No. 88317856

 

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. 

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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 October 28, 2019, 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.”