To: | Goal Global Recoveries Inc. (LRothrock@taftlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88324824 - GOAL - IRW01 GN001 |
Sent: | December 17, 2019 07:32:31 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88324824
Mark: GOAL
|
|
Correspondence Address: |
|
Applicant: Goal Global Recoveries Inc.
|
|
Reference/Docket No. IRW01 GN001
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 17, 2019
This Office action is in response to applicant’s communication filed on November 22, 2019.
In a previous Office action(s) dated May 22, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with several registered marks, failure to show the applied-for mark in use in commerce with any of the specified services. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and/or services, provide information about the services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: provide information about the services. See TMEP §§713.02, 714.04.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn: Refusal under Trademark Act Section 2(d). See TMEP §§713.02, 714.04.
The following issues are continued and maintained.
SUMMARY OF ISSUES:
MAINTAINED AND CONTINUED: UNVERIFIED SUBSTITUTE SPECIMEN
Applicant was previously refused registration and required to submit a verified substitute specimen in International Classes 36, 42, and 45 to show use of the applied-for mark in commerce because the original specimen did not show use of the mark with any services specified in the application. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2); TMEP §§904, 904.07(a).
In response to each refused international class, applicant provided a substitute specimen that appears to show use of the applied-for mark in commerce for the services in Classes 36 and 42 only, but is not verified. The USPTO does not accept materials submitted as specimens without proper verification. See 37 C.F.R. §§2.34(a)(1), 2.59(a)-(b)(1), 2.76(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).
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). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this final specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit a verification of the previously submitted substitute specimen, attesting that it 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. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “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 or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Submit a different and properly verified specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. The substitute specimen cannot be accepted without the verified statement referenced in (1).
(3) 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.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
MAINTAINED AND CONTINUED: SPECIMEN DOES NOT SHOW USE WITH CLASS 45 SERVICES
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 45. 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). Specifically, the specimen and substitute specimen for International Class 45 indicates that applicant provides “class actions services,” but does not indicate that these services are legal in nature.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
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). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “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 or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) 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.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
MAINTAINED AND CONTINUED: Identification of Services
The identification of services must be amended because some of the wording is indefinite, overly broad, or was expanded beyond the scope of the wording in the original application.
Applicant may substitute the following wording, if accurate: outsource service provider in the field of reclamation of international taxes for others,” in International Class 36.
In this case, the application originally identified the goods and/or services as follows: “Legal services, namely, representation of clients in securities class action lawsuits.”
However, the proposed amendment identifies the following services: “Legal document preparation and support services, namely, representation of clients in securities class action lawsuits in the nature of notifying, processing, submitting, tracking, and reporting of and collecting monetary compensation from securities class action recovery claims.”
This portion of the proposed amendment is beyond the scope of the original identification because “document preparation and support” is not an umbrella category of legal representation of clients. Similarly, “notifying, processing, submitting, tracking, and reporting” are not types of legal representation services—though they may be activities performed in the course legal representation.
To address the issues discussed above, applicant may adopt any or all of the following identification of services, if accurate. Suggested changes are indicated in bold, strikethrough, and underlined fonts.
International Class 36: Providing outsourced
Outsource service provider in the field of international tax reclamation financial services reclamation of international taxes for others, the foregoing excluding financial advice, financial management advice, investment advice, investment management advice, investment
management, financial planning, financial portfolio analysis and financial portfolio management.
International Class 42: Providing online non-downloadable software for document management, namely, software for the management of documents related to the creation, processing, submission, tracking, and reporting of and collection of refunds from tax reclamation claims, and for the management of documents related to the notification, tracking, and reporting of securities class action recovery claims.
International Class 45: Legal services, namely, representation of clients in securities class action lawsuits.
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.
Responding to this Office Action
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.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
(571) 272-3681
april.reeves@uspto.gov
RESPONSE GUIDANCE