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: 5/10/2019

 

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.

 

SUMMARY OF ISSUES

 

• Section 2(d) Likelihood of Confusion – Partial Refusal
• Prior-Filed Application – Advisory
• Classification and Identification of Goods and Services – Clarification Requirement
• Mark Description – Requirement

 

SECTION 2(d) LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL

THIS PARTIAL REFUSAL APPLIES TO CLASSES 16, 41, and 44 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4491938 (RESONATE HEALTH), 4624632 (RESONATE), 5517759 (RESONATE GLOBAL MISSION), 5721653 (RESONATE: SUSTAINING SUCCESS).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Applicant has applied to register the mark RESONATE with design for, in relevant part:

 

Class 16:         Printed matter and publications relating to vibrational products and related services for rebalancing emotional and energetic states for wellbeing; printed matter; photographs; instructional and teaching materials; posters; stationery

Class 41:         Conferences, seminars, symposiums, workshops, trainings, programs and exhibitions all being in the field of vibrational products and related services for rebalancing emotional and energetic states for wellbeing; educational and training services

Class 44:         Alternative medicine services; health and wellness services; meditation services; courses and programs using vibrational products and essences to improve health and wellness and rebalance emotional and energetic states for wellbeing

 

The registered marks are:

 

U.S. Registration No. 4491938: RESONATE HEALTH for “Consultation services in the field of palliative care; Consulting in the field of health and wellness to bring about personal happiness; Consulting services in the field of health; Consulting services in the field of medical care; Consulting services in the field of mental fitness; Consulting services in the field of mental health and wellness; Consulting services in the fields of diagnostic medical testing and nutrition; Consulting services in the fields of health and nutrition; Consulting services to health care providers in the field of treating life-changing or life-threatening diseases; Counseling services in the fields of health, nutrition and lifestyle wellness; Geriatric health care management services; Health care; Health care services, namely, disease management programs; Health care services, namely, providing a database in the field of geriatric internal medicine, HIV, and/or informatics information and featuring inputting and collection of data and information all for treatment and diagnostic purposes; Health care services, namely, wellness programs; Health screening services in the field of geriatric internal medicine, HIV, and/or informatics; Healthcare services, namely, integrated healthcare services with a network of international healthcare providers; Home health care services; Internet-based health care information services; Managed health care services; Medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable medical devices with automated alert and monitoring capacity; Medical assistance services in the nature of medical information provided to medical professionals from remote locations via the Internet and global computer networks through the use of archived medical images and a data storage and retrieval system; Medical consultations; Medical consultations provided via phone, online chat or videoconferencing; Medical counseling; Providing a web site featuring information in the field of mental health and wellness; Providing a web site featuring information on health and nutrition; Providing a web site featuring medical information; Providing a website featuring information about health, wellness and nutrition; Providing an internet website for medical professionals and medical patients featuring medical information from remote locations via devices that feed information to the website that is processed, exchanged and accessed in real-time by users; Providing an internet website for medical professionals and medical patients featuring medical information from remote locations via electronic patient monitoring devices that feed in formation to the web site that can be accessed in real-time by medical professionals for purposes of monitoring and diagnosing medical conditions; Providing an on-line computer database featuring information regarding health and nutrition; Providing health care information by telephone; Providing health care information by telephone and the internet; Providing health information; Providing information, news and commentary in the field of nutrition, health and wellness; Providing medical information, consultancy and advisory services; Providing on-line information, news and commentary in the field of health and wellness relating to geriatric internal medicine, HIV, and/or informatics; Provision of health care and medical services by health care professionals via the Internet or telecommunication networks; Provision of medical services by health care professionals via the internet or telecommunication networks; Remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; Web-based health assessment services, namely, a series of health-related questions for response from the user that result in a report that provides health-related information in the form of recommended educational resources and treatment information; Wellness and health-related consulting services” in International Class 44. 

 

U.S. Registration No. 4624632: RESONATE for “Educational services, namely, workshops, classes and seminars in the field of multi-media presentation design and content development including storytelling models and techniques” in International Class 41.

 

U.S. Registration No. 5517759: RESONATE GLOBAL MISSION for “Missionary services, namely, religious instruction services and conduction of educational seminars in the fields of theology, leadership development, linguistics and literacy training” in International Class 41.

 

U.S. Registration No. 5721653: RESONATE: SUSTAINING SUCCESS for “Business education and training services, namely, developing customized leadership and executive development programs, providing executive coaching services, and providing business education programs to employees and executives” in International Class 41. 

 

Similarity of Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Applicant’s RESONATE mark is confusingly similar to the registered marks because the word portion of the applied-for mark is incorporated in all of the registered marks, which renders the marks similar in appearance, sound, meaning, and overall commercial impression.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part in that they all contain the word RESONATE. 

 

Moreover, RESONATE comprises the first or only term in all of these marks and therefore constitutes the dominant word portion of the marks.  This is because consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

The similarities between the word portions of these marks are not obviated by the design element present in the applied-for mark.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Thus, the marks are confusingly similar. 

 

Relatedness of Goods and Services

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Relatedness to U.S. Registration No. 4491938 (RESONATE HEALTH)

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration does not limit its “health care” and “health care services, namely, wellness programs” to a specific type or field, such that it is presumed to encompass all such types and fields, including applicant’s more narrowly defined areas of “alternative medicine,” “health and wellness,” “meditation,” and “programs using vibrational products and essences to improve health and wellness and rebalance emotional and energetic states for wellbeing” recited in Class 44 of the application.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s services are related.

 

Relatedness to U.S. Registration Nos. 4624632 (RESONATE), 5517759 (RESONATE GLOBAL MISSION), and 5721653 (RESONATE: SUSTAINING SUCCESS)

 

Again, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “educational and training services,” which presumably encompasses all services of the type described, including the more narrow “workshops, classes and seminars in the field of multi-media presentation design and content development including storytelling models and techniques” recited in U.S. Registration No. 4624632, “conduction of educational seminars in the fields of theology, leadership development, linguistics and literacy training” recited in U.S. Registration No. 5517759, and “developing customized leadership and executive development programs, providing executive coaching services, and providing business education programs to employees and executives” recited in U.S. Registration No. 5721653.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

Moreover, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case.  This evidence shows that entities that provide educational and training services in a particular field commonly also produce instructional and teaching materials in that same field.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).  In this case, the application does not specify a field or subject matter of the instructional and teaching materials and therefore, these goods could encompass the fields or subject matters of the educational services specified in the cited registrations.  

 

Therefore, since the marks are confusingly similar and the goods and services are closely related, purchasers are likely to mistakenly believe that they emanate from a common source.  Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act. 

 

PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88165606 (RESONATE) precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES – CLARIFICATION REQUIREMENT

 

As a preliminary matter, the wording “including” and “which may contain” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Similarly, the wording “relating to, ” “related services,” and “in relation to,” in the identification is indefinite and must be deleted and replaced with definite terms because it does not make clear what the goods and services are. 

 

Applicant has included the term “and/or” or “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, applicant’s use of the term “or” in the identification renders the nature of the goods and services unclear. 

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

The wording “vibrational products” in the identification of goods and services is indefinite and must be clarified because the nature of these goods are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording 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.  Applicant may amend this wording by specifying that these are vibration therapy products.

 

International Class 3

 

Applicant must clarify the wording “Vibrational products including essences, sprays and oils which may contain essential oils for ingestible, topical and environmental application to rebalance emotional and energetic states for wellbeing,” “body sprays and scented room sprays containing essential oils and vibrational remedies,” “essences,” “products containing or based on essential oils or essences,” and “vibrational remedies and essence preparations” in the identification of goods in International Class 3 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, ethereal essences and flower essences for cosmetic purposes are in class 3 whereas flower essences for medical purposes for the treatment of anxiety are in class 5 and alcoholic essences are in class 33.  Likewise, body sprays and scented room sprays are in class 3 whereas deodorizing room sprays are in class 5.  Vibrational remedies in the nature of essential oils are in class 3 whereas vibrational remedies in the nature of medicinal herb extracts are in class 5.  Please also note that if these goods are comprised of essential oils, they are classified in class 3. 

 

International Class 5

 

Applicant must clarify the wording “Vibrational products including essences, sprays and oils in a solution for rebalancing emotional and energetic states for wellbeing” and “natural remedies, medicines and preparations” in the identification of goods in International Class 3 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, such essences, sprays and oils that are comprised of essential oils are classified in class 3 whereas medicinal sprays and medicinal oils are classified in class 5.

 

The wording “medicinal sprays” and “medicinal essences” in the identification of goods is indefinite and must be clarified because the nature of these goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For goods used for medical purposes, the identification must specify the disease or condition being treated by these goods.

 

International Class 16

 

The wording “Printed matter and publications relating to vibrational products and related services for rebalancing emotional and energetic states for wellbeing; printed matter” in the identification of goods is indefinite and must be clarified to indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).  For example, “magazines in the field of medicine,” “newsletters about television programs,” and “books and pamphlets in the field of financial classification of companies and securities,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

Additionally, the identification for “instructional and teaching materials” in International Class 16 is indefinite and too broad and must be clarified because the word does not make clear the nature of the “instructional and teaching materials” are thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether goods are printed materials in International Class 16, downloadable materials in International Class 9, or online/Internet materials in International Class 41, and amend the identification to provide the additional information specified below for such goods.  Moreover, applicant must specify the subject matter of the educational materials. 

 

International Class 35

 

The activities identified as “retail services” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. 

 

If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring vibrational therapy products,” “retail distributorships in the field of vibrational therapy products,” and “retail outlets featuring vibrational therapy products.”  See TMEP §§1301.01(a)(ii), 1402.11. 

 

International Class 41

 

The identification for “educational services and training services” is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing.  Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

International Class 44

 

The wording “health and wellness services” and “meditation services” in the identification of services is also indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant must also clarify the wording “courses and programs using vibrational products and essences to improve health and wellness and rebalance emotional and energetic states for wellbeing” in the identification of services in International Class 44 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite again because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, providing educational courses in the field of vibrational energy health, wellness, and wellbeing, using vibrational energy healing products and essential oils are in class 41 whereas wellness programs being health care services in the field of vibrational energy health, wellness, and wellbeing, using vibrational energy healing products and essential oils are in class 44. 

 

Please note that if applicant adopts the suggested amendment of the goods below, then applicant must amend the classification to International Classes 3, 5, 9, 16, 33, 35, 41, and 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  However, applicant has provided the application fee for only six (6) international classes.  Thus, not all international classes in the application are covered by the application fees.  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 goods and/or services accordingly; or (2) deleting from the application the goods and/or 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.

 

Suggested Amendment

 

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

 

International Class 3:             Vibration therapy products, namely, essences, sprays and oils, all being essential oils for ingestible, topical and environmental application to rebalance emotional and energetic states for wellbeing; body sprays and scented room sprays containing essential oils; essential oils; essences in the nature of {specify class 3 goods, e.g., essential oils, ethereal essences, flower essences for cosmetic purposes}; products containing essential oils and essences, namely, {specify common name of class 3 goods, e.g., essential oils for aromatherapy use, mint essence being essential oil}; vibration therapy remedies in the nature of {specify common name of class 3 goods, e.g., essential oils}; essence preparations in the nature of {specify common name of class 3 goods, e.g., essential oils}; natural remedies, medicines and preparations, namely, {specify class 3 goods, e.g., natural essential oils, natural soap bars}

 

International Class 5:             Vibration therapy products, namely, essences, sprays and oils, all for medical and wellbeing purposes for the treatment of {indicate specific disease or condition being treated, e.g., anxiety, depression}; herbal extracts for medical purposes; medicinal herbs and medicinal oils; medicinal sprays, namely, {specify nature and purpose of class 5 goods, e.g., aromatherapy sprays other than essential oils for relieving stress, therapeutic spray to sooth and relax the muscles}; natural remedies, medicines and preparations, namely, {specify class 5 goods, e.g., natural herbal supplements, natural sleep aid preparations}; medicinal essences, namely, {specify class 5 goods and medical purpose, e.g., flower essences for medical purposes for the treatment of anxiety}; vibrational remedies, namely, {specify class 5 goods, e.g. medicinal herb extracts}

 

International Class 9:          Downloadable educational instructional and teaching materials in the field of {specify area of use, e.g., vibration therapy}

 

International Class 16:           Printed matter and printed publications in the nature of pamphlets, newsletters, booklets in the field of vibration therapy products and vibration therapy services for rebalancing emotional and energetic states for wellbeing; printed matter, namely, {specify common name of printed matter and subject matter, e.g., booklets in the field of vibrational therapy}; photographs; printed instructional and teaching materials in the field of {specify area of use, e.g., vibration therapy}; posters; stationery

 

International Class 33:        Alcoholic essences

                                

International Class 35:           Retail store services featuring vibration therapy products used for vibration therapy services for rebalancing emotional and energetic states for wellbeing; retail store services, namely, online retail store services featuring remedies for vibration therapy and printed materials

 

International Class 41:           Educational services, namely, conducting conferences, seminars, symposiums, workshops, trainings, programs and exhibitions in the field of vibration therapy products and vibration therapy services for instruction on rebalancing emotional and energetic states for wellbeing; educational and training services, namely, {specify common name of service, e.g., conducting classes, camps} in the field of {specify subject matter, e.g., vibration therapy} and distribution of course materials in connection therewith

 

International Class 44:           Alternative medicine services; health and wellness services, namely, {specify common name of class 44 service, e.g., health spa services for health and wellness of the mind, body, and spirit}; meditation therapy services; health care services in the nature of wellness programs that use vibration therapy products and ethereal essences to improve health and wellness and rebalance emotional and energetic states for wellbeing

 

Amendment Guidelines

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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).

 

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 – REQUIREMENT

 

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

 

(1)       List the goods and/or 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 8 classes; however, applicant submitted a fee(s) sufficient for only 6 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

MARK DESCRIPTION – REQUIREMENT

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.

 

For clarity purposes, the following description is suggested, if accurate:  The mark consists of the stylized wording “RESONATE” to the right of a stylized flower design.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  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 refusal(s) and/or requirement(s) 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.  

 

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

Phone: (571) 272-5579

young.wolfe@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/10/2019 FOR U.S. APPLICATION SERIAL NO. 88317858

 

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 5/10/2019 (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.