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: 5/22/2019

 

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. The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes.  The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure. 

 

SUMMARY OF ISSUES:

• Refusal-Likelihood of Confusion
• Potential Refusal: Prior Filed Application
• Specimen-Based Refusal
• Identification of Goods and Services: Amendment Required
• • Multiple Class Advisory

 

REFUSAL-LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5404732.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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 for the mark MIRROR in standard characters for use in connection with, in pertinent part, “providing education courses in the field of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth offered through online, non-downloadable videos and instructor assistance; educational and entertainment services, namely, providing a website featuring blogs, non-downloadable videos, non-downloadable audio recordings, non-downloadable instructional videos, non-downloadable instructional audio recordings, webinars, podcasts in the fields of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; educational services, namely, providing and conducting live and online self-paced lectures, academic mentoring and enrichment programs, instruction, teaching, training, classes, seminars, courses, presentations, workshops, educational question and answer challenges, test questions, self-assessment questions, panel discussions, personal and professional coaching, retreats and camps in the fields of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth and instructional materials in connection therewith, provided in-person, on-line and via telephone conference calls; educational and entertainment services, namely, providing online non-downloadable electronic publications in the nature of articles, magazines, journals and online non-downloadable e-books in the fields of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; educational and entertainment services, namely, providing motivational and educational speakers in the fields of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; education services, namely, training and providing educational online training to educators, coaches, guides, counselors and therapists who provide life and personal coaching in the field of personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; professional coaching services in the field of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; providing online training materials in the nature of non-downloadable reports, data sheets, study and teaching guides, coaching guides, samples of profiles, tips for writing newsletters, transcripts, manuals, reviews, reference tables, educational question and answer challenges, test questions, self-assessment questions, how-to guides, and booklets for educators, coaches, guides, counselors and therapists in the field of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; education services, namely, providing non-downloadable on-line training materials in the nature of reports, data sheets, study and teaching guides, newsletters, transcripts, manuals, course outlines, sample profiles, sample questions, how-to guides, reviews, reference tables in the field of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; providing a website featuring blogs, journals, resources and non-downloadable publications in the nature of articles, books, brochures, white papers and news feeds in the fields of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; …life coaching services in the fields of…personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; personal coaching services in the fields of…personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; education services, namely, providing individual coaching, small group sessions, group coaching sessions and seminars in the fields of …personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth” in class 41.

 

The registrant’s mark is MIRROR LOVE in standard characters for use in connection with, in pertinent part, “personal image development consultation; spiritual consultation” in Class 45.

 

Similarity of the 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).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

In this case the dominant portion of both marks, “MIRROR.” The addition of “LOVE” to registrant’s mark does not distinguish the marks. The applicant’s mark is the same word as the first word in registrant’s mark. 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”). Since the marks both have the same dominant feature and this is used as the first word the marks appear the same, and have a similar sound.

 

Overall, the marks convey a highly similar commercial impression. The dominant term in each mark is identical. Thus, the marks are confusingly similar.

 

Relatedness of the Goods and Services

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and 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).

 

Here the registrant services are “personal image development consultation; spiritual consultation.” in Class 45. The applicant provides a variety of downloadable materials, educational services, and coaching services that covers the topics of “personal development, personal improvement, living a great life, living a better life, getting to know oneself, well-being, spiritual growth” in classes 9, 41, and 45. Applicant’s goods and services frequently reference subject matters aimed at “personal development, personal improvement” and the like, such as “living a better life,” and “getting to know oneself.” These goods and services are commercially related to the registrant’s services because registrant’s services focus on the area of “personal image development” namely, improving the impression given to others in terms of brand or style or improving one’s impression on others. The subject matter covered in applicant’s goods and services, personal development and personal improvement, are broader categories that cover the subject matter featured in applicant’s services, personal image development. Applicant also covers spiritual growth in it goods and services, and registrant covers spiritual guidance services.

 

Those that offer registrant’s consultation services commonly offer information services, education, and resources in the nature of publications on topics like those identified by applicant. The attached excerpts from Soul Solutions, McKnight Image Lab, Vital Force, and Image Consulting show that spiritual growth services and self-development consultations are commonly performed by the same entity under the same mark. The attached Internet evidence establishes that the same entity commonly manufactures, produces, or provides the relevant goods and services and markets the goods and services under the same mark, the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods and services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Conclusion

 

In sum, because applicant’s mark is confusingly similar to the mark of registrant and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services. Therefore, applicant’s mark is refused registration pursuant to §2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

Applicant should note the following additional potential ground for refusal.

 

 

POTENTIAL REFUSAL: PRIOR FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87937533 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.

 

Applicant should note the following additional ground for refusal.

 

SPECIMEN-BASED REFUSAL

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 41, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark variably as “MIRROR DATING,” “MIRRORING,” “MIRROR UNIVERSITY,” and “MIRROR U.”  However, the drawing displays the mark as “MIRROR.”  The mark on the specimen does not match the mark in the drawing because the specimen adds additional wording to “MIRROR” that is inseparable from “MIRROR” giving a unitary commercial impression. Please note, the specimen showing “MIRROR™ UNIVERSITY” is unacceptable because “MIRROR UNIVERISITY” conveys a single unitary commercial impression. Consumers would see and understand “MIRROR UNIVERSITY” to be the source identifier since consumers are used to seeing a word, name, or geographic location plus “UNIVERISTY” to refer to educational services. See attached evidence from George Mason University, Howard University, and Columbia University. Thus, consumers would interpret “Mirror University” as the mark and not just “MIRROR.” Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

(2)       Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, amending the mark to match the specimen would require the addition of wording to the applied for mark which would change the commercial impression of the mark. Since amending the mark to match the specimen would change the commercial impression of the mark the amendment would be material and therefore not acceptable.

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

            Detailed Instructions for Specimens

 

To submit a verified specimen or verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted:  (2) check the box next to the following statement:  “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].  Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant must clarify the wording in the identification of goods and services in International Class 41 because it is indefinite and too broad. Specifically, non-downloadable journal, resources for the writing of online profiles is in Class 41 but downloadable journal, resources for the writing of online dating profiles is in Class 9 while printed journal, resources for the writing of online dating profiles are in Class 16. The subject matter or field in the identifications also is not always clear or is indefinite; for example, “journals” is indefinite and overbroad in class 41 and must specify that the journals being provided are online and non-downloadable and must further specify the field or subject matter of the journal. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  

 

In Class 41, the wording “online” or “non-downloadable” has been added to clarify entries because the entries would otherwise be overbroad since they could be classified in Class 9 if they were downloadable. “Sessions” has been added to the identification to clarify educational services identified as “answer challenge,” “test question,” and self-assessment question” to clarify these entries as educational services as opposed to a form of publication that may be downloadable and in Class 9 or non-downloadable and in Class 41. Further, “guides,” “worksheets,” and “documents” has been added to portions of entries identified as publications where the form of publication was indefinite. Additionally, applicant’s use of “talks” as an educational services is indefinite and so “talks in the nature of lectures” has been suggested below to make the entry a definite education service.

 

            Suggested Amendments

 

Below is a suggested identification and classification. Bolded words represent wording that has been added or changed. Finally, please note that some suggestions require further information supplied by the applicant and are noted within braces and are italicized.

 

Applicant may substitute the following wording, if accurate: 

 

In Class 41:

 

“providing education courses in the field of dating, online dating, online dating messaging, dating communication, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth offered through online, non-downloadable videos and instructor assistance; educational and entertainment services, namely, providing a website featuring blogs, non-downloadable videos, non-downloadable audio recordings, non-downloadable instructional videos, non-downloadable instructional audio recordings, non-downloadable webinars, and podcasts in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; educational services, namely, providing and conducting live and online self-paced lectures, academic mentoring and enrichment programs, instruction, teaching, training, classes, seminars, courses, presentations, workshops, educational question and answer challenge sessions, test question sessions, self-assessment question sessions, panel discussions, personal and professional coaching, retreats and camps in the fields of dating, online dating, online dating messaging, dating communication, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth and distribution of instructional materials in connection therewith, provided in-person, on-line and via live telephone conference calls; educational and entertainment services, namely, providing online non-downloadable electronic publications in the nature of articles, magazines, journals and e-books in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; educational and entertainment services, namely, providing motivational and educational speakers in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; education services, namely, providing training and online training to educators, coaches, guides, counselors and therapists who provide life and personal coaching in the field of dating, online dating, online dating messaging, dating communication, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; professional coaching services in the field of setting up a coaching, education, guidance, counseling, therapy practice, doing marketing and delivering coaching, guidance, counseling; educational services in the form of training, in person and online, in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; providing online training materials in the nature of non-downloadable reports, data sheets, study and teaching guides, coaching guides, sample documents of profiles, guides with tips for writing newsletters, transcripts, manuals, review guides, reference table documents, educational question and answer challenge documents, test question documents, self-assessment question documents, how-to guides, and booklets for educators, coaches, guides, counselors and therapists in the field of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; education services, namely, providing non-downloadable on-line training materials in the nature of reports, data sheets, study and teaching guides, newsletters, transcripts, manuals, course outlines, sample documents of profiles, sample question documents, how-to guides, reviews guides, and reference table documents in the field of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; providing a website featuring blogs and online, non-downloadable publications in the nature of journals, resources  in the nature of_______{further specify the type of resources, e.g. “books,” “guides,” “articles”}, articles, books, brochures, white papers and news feeds in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; publishing of electronic publications; life coaching services in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; personal coaching services in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth; education services, namely, providing individual coaching, small group sessions, group coaching sessions and seminars in the fields of dating, online dating, matchmaking, choosing relationships, being in relationships, writing personal profiles, writing online profiles, writing online dating profiles, online dating messaging, dating communication, personal growth, personal improvement, personal development, interpersonal development, living a great life, living a better life, getting to know oneself, well-being, and spiritual growth.”

 

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 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 Advisory

 

The application references goods and 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 2 classes; however, applicant submitted a fee sufficient for only 1 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 not acceptable for any international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

            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 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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

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.  

 

 

 

/Sean O'Tormey/

Sean O'Tormey

Examining Attorney

Law Office 111

(571) 272-3081

sean.otormey@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 5/22/2019 FOR U.S. APPLICATION SERIAL NO. 88319175

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/22/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Sean O'Tormey/

Sean O'Tormey

Examining Attorney

Law Office 111

(571) 272-3081

sean.otormey@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.