United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to
the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 16, 2020
INTRODUCTION
This Office action is in response to applicant’s communication filed on December 7, 2019.
In a previous Office action dated June 11, 2019, the trademark examining attorney required applicant satisfy the following requirements: pay an additional fee for not complying with TEAS Plus requirements and amend the identification of services with definite wording.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
- Additional Fee for Loss of TEAS Plus Status
- Identification of Services Requires Amendment
ADDITIONAL FEE FOR LOSS OF TEAS PLUS STATUS
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. Specifically, 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 additional fee is required even if applicant later provides definite, acceptable wording for its identification of services.
Applicants must submit the additional processing fee of $125 per class of services to move forward in the registration process. 37 C.F.R. §§2.6(a)(1)(v),
2.22(c), 2.23(c); TMEP §§819.04, 820.04.
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.
How to respond. Click to file a request for reconsideration of this final Office
action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial
and Appeal Board (TTAB) with the required filing fee(s).
Matthew D. McClellan/
Trademark Examining Attorney, Law Office 121
Phone: (571) 272-5148
Matthew.McClellan@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.