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: 6/24/2019

 

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

 

• BASIS FOR APPLICATION REQUIRED
• CLARIFICATION OF ENTITY TYPE REQUIRED
• IDENTIFICATION AND CLASSIFICATION OF SERVICES
• MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

BASIS FOR APPLICATION REQUIRED

 

Applicant has not specified a filing basis in the application.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806.  Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. 

 

An applicant may add one or more of the following four bases to an application after filing:

 

(1)        Use of the mark in commerce under Trademark Act Section 1(a);

 

(2)        A bona fide intention to use the mark in commerce under Section 1(b);

 

(3)        A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or

 

(4)        A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).

 

Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services.  37 C.F.R. §2.34(b); TMEP §806.02(b).

 

For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

Applicant should note the additional requirements below.

 

CLARIFICATION OF ENTITY TYPE REQUIRED

 

The name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the legal entity is set forth as a corporation.  Applicant must clarify this inconsistency.  TMEP §803.02(a); see 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b).

 

If applicant is an individual, applicant must request that the legal entity be amended to “individual” and must indicate his or her country of citizenship.  See TMEP §803.03(a).  Alternatively, if applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization.  See TMEP §803.03(c).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

Applicant should note the additional requirement below.

 

IDENTIFICATION AND CLASSIFCATION OF SERVICES

 

The wording “USPAACC offers one-on-one management and technical assistance in the procurement process where suppliers learn to market and win contracts from corporations and government” in the identification of services is indefinite and must be clarified.  First, the applicant should not use its mark in the identification of services.  The identification is a listing of the services the applicant provides to third parties and should not be a narrative explanation of the applicant’s business.  Second, if the applicant provides “one-on-one business management and technical assistance concerning the procurement process where suppliers learn to market and win contracts from corporations and government,” then the applicant may so clarify and the services are properly classified in International Class 35.  In addition, the wording “Provide Asian American Suppliers Council (AASC) for Asian American suppliers and corporate/government purchasers” is also unacceptable as indefinite.  The service provided to third parties is unclear.  It appears that the Council is an entity within the USPAACC.  However, provision of such an entity is not a recognizable service provided to third parties.  Thus, the applicant must specify the actual service it provides to third parties and it must classify the service in the appropriate International Class.  The applicant should not use a proprietary designation, namely, Asian American Suppliers Council (AASC) in the identification of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Further, applicant has classified “Produce educational seminars for executives and managers on the dynamics of living, working and doing business in a multicultural and multi-ethnic environment” in International Class 35; however, the proper classification is International Class 41. The wording “Publish annual Business Directory of Asian American Organizations and Resource Guide and quarterly newsletter, East West Report” is also unacceptable as indefinite and as currently classified.  First, publishing services are properly classified in International Class 41.  Second, the applicant should not list the proprietary names of the items it publishes.  If the applicant publishes business directories and quarterly newsletters directed to Asian American businesses, then it may so clarify.  Therefore, applicant may respond by (1) adding International Class 41 to the application and reclassifying these services in the proper international class, (2) deleting “Produce educational seminars for executives and managers on the dynamics of living, working and doing business in a multicultural and multi-ethnic environment; Publish annual Business Directory of Asian American Organizations and Resource Guide and quarterly newsletter, East West Report” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “Business colloquies, E-Portal, Supplier Diversity Manager's Exchange, and the largest annual national business conference designed for the Asian American community” is also unacceptable as indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. First, the applicant must clarify the meaning of business colloquies.  If the applicant provides “printed matter, namely colloquies in the field of business” then it may so clarify and the goods are properly classified in International Class 16.  Second, the wording “E-Portal” is unacceptable.  The applicant must clarify the nature of the services provided.  For example, if the applicant provides a website promoting the business interests of the Asian American community by providing business information and hypertext links to the websites of others, then it may so clarify and the services are properly classified in International Class 35.  Furthermore, the applicant must amend the recitation of services by deleting the wording “E-Portal” and substituting the common commercial or generic name for the services.  Also, the wording “Supplier Diversity Manager’s Exchange” does not identify recognizable services provide to third parties.  If this language is simply the proprietary name of a division of the applicant, the applicant should delete the proprietary language and specify the services it provides to third parties.  In addition, the applicant must classify the services as appropriate.  Lastly, if the applicant organizes annual national business conference designed for the Asian American community then it must so clarify and the services are properly classified in International Class 35.

 

Applicant may substitute the following wording, if accurate (suggested language in bold):

 

Class 16 (add class)

 

Printed matter, namely, business colloquies for the Asian American community

 

Class 35

 

Chamber of Commerce Services, namely representing and promoting the interests of Asian American businesses and professionals in the United States; one-on-one business management and technical assistance in the procurement process where suppliers learn to market and win contracts from corporations and government; business consultation for Asian American suppliers and corporate and government purchasers; providing a website promoting the business interests of the Asian American community by providing business information and business related hypertext links to the websites of others; organizing and conducting annual national business conferences designed for the Asian American community

 

Class 41 (add class)

 

Provide educational seminars for executives and managers on the dynamics of living, working and doing business in a multicultural and multi-ethnic environment; Publishing annual business directories, resource guides and quarterly newsletters for the Asian American community

 

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).

 

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.

 

If the applicant adopts the suggested amendment to the recitation of services, the applicant must amend the classification to International Classes 16, 35 and 41 as outlined below.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq. 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, 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 fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

The fee for adding classes to a regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS).  See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).

 

RESPONSE GUIDELINES

 

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. 

 

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.

 

TRADEMARK COUNSEL SUGGESTED

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

 

/Cheryl D. Kluwe/

Examining Attorney

Law Office 126

(571) 270-3839

cheryl.kluwe@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 6/24/2019 FOR U.S. APPLICATION SERIAL NO. 88363759

 

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 6/24/2019, 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. 

 

Kluwe, Cheryl

/Cheryl D. Kluwe/

Examining Attorney

Law Office 126

(571) 270-3839

cheryl.kluwe@uspto.gov

 

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.