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: 6/11/2019

 

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

 

• TEAS Plus Status Lost
• Identification of Services Requires Amendment

 

TEAS PLUS STATUS LOST

 

Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.

 

Applicant filed a TEAS Plus application that identified one or more services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding services.  At the time of filing, a TEAS Plus application must include an identification of services from the ID Manual.  TMEP §819.01(g); see 37 C.F.R §2.22(a)(8).  By inserting inappropriate wording, applicant has, in effect, failed to submit an identification from the ID Manual.  See TMEP §819.01(g). 

 

Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $125 per class.  See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04.  The additional fee is required even if applicant later satisfies this requirement by properly filling in the blank/deleting the unacceptable wording in the identification.  TMEP §819.01(g).

 

IDENTIFICATION OF SERVICES REQUIRES AMENDMENT

 

The wording used to describe portions of the applicant’s services needs clarification because it is indefinite and the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. As previously noted, applicant filed a TEAS Plus application that identified one or more services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding services.

 

The following are examples of indefinite wording and improper entries in applicant’s identification of services:

 

• The wording “abstracting services in the nature of extracting and summarizing information from archived records” is indefinite because applicant has failed to specify the particular field or subject matter of the records, e.g., medical, property, or financial records.

 

• The wording “Administration of a consumer membership program for enabling participants to receive product samples and discounts in the field of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to identify specific goods and has included the improper wording “services, blockchain and other technologies” that is inappropriate for this particular fill-in-the-blank entry.

 

• The wording “Administering a membership club by means of selecting said goods based on consumer expectations and arranging periodic shipment to club members” is indefinite because applicant has failed to specify particular goods.

 

• The wording “Administration of employee benefit plans concerning a wide variety of enterprises” is indefinite because applicant has failed to indicate the type of employee benefit plan, and because the wording “a wide variety of enterprises” is too broad/not specific.

 

• The wording “Advertisement and publicity services by physical and virtual properties” is indefinite because applicant has failed to specify the means by which advertisement and publicity services are provided, e.g., by television, internet, radio, mail, etc. The wording “physical and virtual properties” does not clearly identify the nature of how applicant provides these services.

 

• The wording “Advertising services in the field of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to specify particular goods and services. While “advertising services” is an acceptable identification for Class 35 and no further specification is required, if applicant does provide specification, such specification must be clear and definite.

 

• The wording “Advertising services, namely, promoting and marketing the goods and services of others in the field of a wide variety of consumers and enterprises via print and electronic media” is indefinite because applicant has failed to specify the field of its services, e.g., cultural events, restaurants, shopping, travel, etc. The wording “a wide variety of consumers and enterprises” is indefinite and too broad.

 

• The wording “Agency representation for home renters obtaining needed essential services” is indefinite and must be amended to provide clarification as to the “essential services,” e.g., utility hook-up services.

 

• The wording “Business management services, namely, managing office functions in the nature of Goods, Services, Blockchain and other Technologies for others” is indefinite because applicant has failed to indicate specific office functions, e.g., copying, printing, etc.

 

• The wording “Consulting services in the field of medical practice management for others in the field of Goods, Services, Blockchain and other Technologies”  is indefinite because applicant has failed to identify specific areas of medical practice intended for this entry, e.g., dentistry, anesthesia, veterinary, etc.

 

• The wording “Distribution of advertising materials in the nature of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to identify specific advertising materials, e.g., printed material, samples, videos, etc.

 

• The wording “Fuel management services in the field of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to identify specific fields related to fuel management, e.g., aviation, trucking, vehicle fleets, etc.

 

• The wording “Lobbying services, namely, promoting the interests of a wide variety of consumers and enterprises in the fields of legislation and regulation” is indefinite because applicant has failed to identify specific groups for whom applicant is promoting their, e.g., motorcyclists, mathematicians, skydivers, authors.

 

The aforementioned entries are just a few examples of indefinite entries in applicant’s identification of services. Applicant must amend these entries and others to provide clarification as to the field, subject matter, and/or nature of its services, using relevant and appropriate wording for each fill-in-the-blank entry. In reviewing indefinite entries, applicant should note its entries that contain the following phrases:

 

·       “Goods, Services, Blockchain and other Technologies” – applicant must provide specific and definite wording as to the types of goods and services, and also ensure that these identifications are relevant and appropriate for fill-in-the-blank entries.

·       “a wide variety of consumers and enterprises” – applicant must provide specific and definite wording as to the purpose or type of consumers and enterprises.

·       “physical and virtual properties” – applicant must provide specific and definite wording as to the nature of the “physical and virtual properties.”

 

The applicant should note the following when amending the identifications.

 

·       The applicant may use different wording of its own when amending the identifications of services.  The applicant must follow the guidelines discussed herein to ensure specificity and accuracy.  Please note that while identifications of services can be clarified or limited by amendment, it is impermissible to add to or broaden the scope of the services beyond those originally listed in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

·       For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

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.  

 

 

/Matthew D. McClellan/

Trademark Examining Attorney, Law Office 121

Phone: (571) 272-5148

Matthew.McClellan@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 6/11/2019 FOR U.S. APPLICATION SERIAL NO. 88351439

 

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 6/11/2019, 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. 

 

/Matthew D. McClellan/

 

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.