To: | Genpact Luxembourg S.à r.l (trademarks@wsgr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88330680 - GENONE - 52223-TM1033 |
Sent: | 5/22/2019 7:14:21 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88330680
MARK: GENONE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Genpact Luxembourg S.à r.l
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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
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.
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On May 22, 2019, the trademark examining attorney and John Slafsky discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
· Identification of Services Requires Amendment (Partial Requirement)
· Multiple Class Application Requirements
· Partial Abandonment Advisory
Identification of Services Requires Amendment (Partial Requirement)
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
· “Consulting related to government” must be further specified as it is too broad and could encompass various types of consulting, such as “government relations consulting” or “consulting in the field of procuring government contracts for the purchase of goods and labor contracting services”.
· Consulting related to “educational resource planning” 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. For example, applicant could be providing consulting services in the field of education administration in class 35 or in the field of educational systems in class 41.
· Consulting related to “human capital management, recruiting and analytics” must be further specified to indicate the nature of the consulting.
The following amendments are suggested, if accurate (added language in bold; deleted language struck; requests for further information in
bold and italicized):
Class 35: Consulting in the field of related to business,
government and educational resource planning, human capital management, recruiting and analytics; {specify consulting in related to government, e.g., government
relations consulting, consulting in the field of procuring government contracts for the purchase of goods and labor contracting services}; consulting services in the field of higher education
administration, namely, educational resource planning; human resource consulting services relating to human capital management;
employment recruiting consultation; business management consulting with relation to strategy, marketing, sales, operation, product design particularly specializing in the use
of analytic models of the understanding and predicting of consumers, businesses, and market trends and actions.
Class 36: Consulting in the field of related to financial
management
Class 41: Consulting in the field of K-12 educational systems, namely, educational resource planning
Class 42: Cloud application service provider, namely, hosting, managing, developing,
programming, and maintaining custom software applications for others in the fields of business, government and educational resource planning, human capital and financial management, recruiting and
analytics; research and development and consulting related to the aforementioned services thereto
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 Requirements
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.
(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 services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 3 classes. 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.
Response Guidelines
Partial Abandonment Advisory
If applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application:
Class 35: Consulting related to business, government and educational resource planning, human capital management, recruiting and analytics
Class 36: Consulting related to financial management
Class 42: research and development and consulting related thereto
The application will then proceed with the following services only:
Class 42: Cloud application service provider, namely, hosting, managing, developing, programming, and maintaining custom software applications for others in the fields of business, government and educational resource planning, human capital and financial management, recruiting and analytics
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Questions about 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.
Dinisha Fernando Nitkin
/dfn/
Examining Attorney
Law Office 110
(571) 272-0212
dinisha.nitkin@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.