Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 14, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on May 23, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the identification of services in International Class 41 contains language that is encompassed in more than one class, thus must be clarified.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.

 

Applicant must address all issues raised in this Office action.  The issue raised in the previous May 23, 2019 Office action is as follow and is maintained:  amendment to the identification of services for International Class 41. 

 

Further, the following refusal and requirements have been satisfied/obviated/withdrawn: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark for International Classes 9 and 41 has been obviated and the disclaimer requirement has been satisfied.  See TMEP §713.02. Additionally, applicant was advised of a prior pending application in Serial No. 87091576 that may cause likelihood of confusion if registered, however, this advisory no longer pertains to this application because the relevant class was divided into another application.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Partial Amendment to the Identification of Services

            •  Multiple Class Application Requirement

 

Applicant must respond to all issues raised in this Office action and the previous May 23, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

AMENDMENT TO THE IDENTIFICATION OF SERVICES

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wording “study center services, namely physical resources in the form of a website featuring information on the topics of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives on the topics of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives, and providing online resource center materials in connection therewith; providing information via the internet in the field of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives” in the identification of services for International Class 41 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 information about technology in International Class 42 and information about art and music in International Class 41 because these services are classified according to the subject matter. 

 

Additionally, applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 41 for “educational services, namely, conducting seminars, workshops, classes, seminars, conferences, workshops, retreats, camps and field trips in the field of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, if accurate: 

 

International Class 9: no changes to amended identification

 

International Class 35: study center services, namely physical resources in the form of a website featuring information on the topics of business, politics, demographics, beliefs and perspectives on the topics of business, politics, demographics, and providing online resource center materials in connection therewith; providing information via the internet in the field of business, politics, demographics

 

International Class 41: museum services; museum curatorial services; educational services, namely, conducting seminars, workshops, classes, conferences, retreats, camps and field trips in the field of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives; libraries; study center services, namely physical resources in the form of a website featuring information on the topics of American history, society, culture, popular culture, art, music, current events, ethics, values, social institutions, customs, language, attitudes, ideals, beliefs and perspectives on the topics of American history, society, culture, popular culture, art, music, current events, ethics, values, social institutions, customs, language, attitudes, ideals, beliefs and perspectives, and providing online resource center materials in connection therewith; providing information via the internet in the field of American history, society, culture, popular culture, art, music, current events, ethics, values, social institutions, customs, language, attitudes, ideals, beliefs and perspectives; publication of educational material, specifically, books, magazines, journals, newspapers, periodicals, catalogs, brochures; entertainment services in the nature of live performance exhibitions by musical groups, dance troupes, historical reenactors, dramatic and comedy performers, and arranging and presenting social entertainment events in the nature of live music, dance, theater, and multi-media performances; exhibition services, namely, conducting online exhibitions and displays and interactive exhibits in the fields of American history, society, culture, popular culture, art, music, innovation, business, politics, current events, religion, ethics, values, demographics, technology, social institutions, customs, language, attitudes, ideals, beliefs and perspectives; organization of exhibitions for cultural or educational purposes; entertainment services, namely, providing an online interactive database of artwork and educational materials and multi- media content related to museum offerings; publication of books, catalogs, magazines, journals, booklets and guides; publication of electronic and online materials, namely, books, brochures, catalogs, podcasts, blogs, magazine, and journals, relating to museum activities, all of the foregoing related to museum exhibits

 

International Class 42: study center services, namely physical resources in the form of a website featuring information on the topics of technology and innovation, beliefs and perspectives on the topics of technology, innovation and providing online resource center materials in connection therewith; providing information via the internet in the field of technology and innovation

 

International Class 45: study center services, namely physical resources in the form of a website featuring information on the topics of religion, beliefs and perspectives on the topics of religion and providing online resource center materials in connection therewith; providing information via the internet in the field of religion

 

Scope Advisory

 

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).

 

ID Manual Online

 

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 services in more than one international class; therefore, if applicant wishes to add additional classes, 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 2 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 TO OFFICE ACTION

Response guidelines.  For this application to proceed, applicant must explicitly address each 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.

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 requirements 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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Adebayo, Omolayo

/Omolayo Adebayo/

Examining Attorney

United States Patent and Trademark Office

Law Office 121

Tel: (571) 272-4711

Email: Omolayo.Adebayo@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 14, 2020 for

U.S. Trademark Application Serial No. 88330735

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Adebayo, Omolayo

/Omolayo Adebayo/

Examining Attorney

United States Patent and Trademark Office

Law Office 121

Tel: (571) 272-4711

Email:

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 14, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”