To: | Alloy (trademarks@tristerross.com) |
Subject: | U.S. Trademark Application Serial No. 88367570 - ALLOY - N/A |
Sent: | September 15, 2020 06:31:08 AM |
Sent As: | ecom112@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88367570
Mark: ALLOY
|
|
Correspondence Address: TRISTER, ROSS, SCHADLER & GOLD, PLLC 1666 CONNECTICUT AVENUE, NW, 5TH FLOOR
|
|
Applicant: Alloy
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: September 15, 2020
Upon further review, the Office has determined that additional clarification is required regarding the identification of applicant’s services. The examining attorney apologizes for the inconvenience. The requirement is continued and maintained as indicated below.
CLARIFICATION OF THE IDENTIFICATION OF SERVICES – TOO BROAD
As amended, the identification of services appears as follows:
The identification of services for International Class 035 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 “Providing an on-line searchable database featuring political information” in Class 035 and “Providing an interactive website featuring technology that allows users to {carry out specific tasks}” in Class 042.
Databases of information are classified based on their subject matter. See 1402.11(a)(ix). Thus, the wording “online searchable database featuring information in the field of . . .” indicates a database service that is properly classified according to the subject matter in the database. In the case of political information, that would be International Class 035. However, providing a website that “allows authorized users to store, access, enhance, receive new information and exchange information” in a database is classified in properly classified in Class 042. Therefore, applicant must separate out it services and classify accordingly. See the following examples from the ID Manual: Providing an on-line searchable database featuring political information on election campaigns in Class 035; Providing an interactive website featuring technology that allows users to {indicate functions or tasks that the technology enables} in Class 042.
Applicant may substitute the following wording, if accurate:
If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 035 and 042. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401. Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
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.
Requirements for Multiple Class Applications
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 035 and for class 042, if added to the application. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
How to respond. Click to file a response to this nonfinal Office action.
/Kevin S. Corwin/
Trademark Examining Attorney
Law Office 112
571-270-1521
Kevin.Corwin@uspto.gov
RESPONSE GUIDANCE