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: 5/23/2019

 

INTRODUCTION

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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

 

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).

 

SUMMARY OF ISSUES

 

• Identification of Services Requirement

 

IDENTIFICATION OF SERVICES REQUIREMENT

 

The wording “editing, content review (peer review) … formatting, journal recommendation” in the identification of services is indefinite and must be clarified because it does not clarify the nature of the services and what works are being edited, reviewed, formatted, e.g., written text editing, peer content review in the nature of proofreading of manuscripts, formatting in the nature of layout services, other than for advertising purposes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, it does not specify whether applicant is providing recommendations of published journals to consumers in International Class 041, or making recommendations of some sort to publications and authors, e.g., providing recommendations on employees for use by journal employers in International Class 035.

 

In addition, the above-referenced wording contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate services that have been deleted from registrations or in an affidavit of incontestability to indicate services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Moreover, the wording “graphics/figures” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “design printing of graphics and figures for others” in International Class 040, “graphic design services for graphics and figures” in International Class 042, or “design of customized books featuring graphics and figures” in International Class 042.

 

Furthermore, the wording “and other services” in the identification of services is indefinite and must be clarified by (1) specifying the common commercial or generic name for these services, or (2) deleting this wording.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar services,” “and related services”) that is not acceptable because it fails to identify specific services.  See TMEP §1402.03(a). 

 

In an identification, an applicant must use the common commercial or generic name for the services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP §§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the services set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

The wording “preparation of manuscripts for publication” is unclear because the services could include various services in multiple classes, e.g., “proofreading of manuscripts” in International Class 041, “bindery services for others, namely, collating, folding, stapling, perforating, cutting and binding of manuscripts” in International Class 040.

 

The wording “manuscript and business services for the publication industry” in the identification of services is indefinite and must be clarified because it does not specifically identify the nature of the services being provided, e.g., whether the manuscripts are being proofread, published, or some other services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  It also does not identify the nature of the business services, and may identify services in multiple classes.  For example, “business training consultancy services” is in International Class 041, but “business consulting, management, and planning services in the field of publishing” would be in International Class 035.

 

The wording “computer and web- based services for publishers and researchers” in the identification of services is indefinite and could include services in multiple classes.  The services must be clarified because it does not specify the nature of the services being offered through computers or the internet, e.g., online academic library services in International Class 041, publication of online journals in International Class 41, scientific research services in International Class 042.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may adopt any of the following identifications, if accurate:

 

IC 035:           Business consulting, management, and planning services in the field of publishing

 

IC 040:           Design printing of graphics and figures for others          

 

IC 041:           Written text editing services; peer content review in the nature of proofreading of manuscripts; translation; formatting in the nature of layout services, other than for advertising purposes; providing recommendations of publications, namely, journals; proofreading of manuscripts; business training consultancy services; online academic library services for publishers and researchers

 

IC 042:           Graphic design services for graphics and figures; drafting services for graphics and figures

 

If applicant adopts any of the suggested amendments of the services to other classes, then applicant must amend the classification to add International Classes 035, 040 or 042, as appropriate.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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.

 

RESPONDING TO THE IDENTIFICATION OF SERVICES REQUIREMENT

 

The application identifies services that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class 041; and applicant needs a specimen for either classes 035, 040 or 042.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

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

 

RESPONDING TO THIS OFFICE ACTION

 

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.  

 

/Jared M. Mason/

Trademark Examining Attorney

Law Office 119

(571) 272-4146

Jared.Mason@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 5/23/2019 FOR U.S. APPLICATION SERIAL NO. 88317934

 

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 5/23/2019 (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.