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: 6/20/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

1. Refusal under Section 2(d) based on a likelihood of confusion with registered marks.
2. Requirement for clarification of the identification and classification of goods/services.
3. Specimen refusal.

 

Please also note that some prior-filed, pending applications have been cited as potential bars to registration.

 

Search Advisory

 

The trademark examining attorney has conducted an initial search of the Office’s database of registered and pending marks to determine if there any conflicting marks.  Please note that an additional search will be conducted upon receipt of a more definite identification of goods/services.

 

1)     Likelihood of Confusion

 

Registration of the applied-for mark is presently refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4207176, 4660065, 4733726, 5330206 and 5197576.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Please see the attached registration information.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Consumers also are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Here, applicant’s mark is “CURATED.”  The registered marks are “CURATE,” “CÙRATE,” “CURATED*” and “QURATE.”

 

In this case, “CURATE,” its misspelling, or its past tense “CURATED” comprises the wording in each mark.  Significantly, as a result of the shared/similar wording, the marks, as a whole, appear and sound similar.  They also create similar overall commercial impression with each calling to mind the selecting, organizing and presenting of things (such as online content, merchandise, information, etc.) typically using professional or expert knowledge (please see the attached definitions).

 

In light of the foregoing, it is likely that consumers would be confused as to the origin of applicant’s goods and/or services.

 

The Goods and/or Services are Related

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

A.     Registration No. 5197576, 4660065, 4207176,  and 5330206

 

The goods and services in Registration No. 5197576 are as follows:

 

Bath oils and bath salts; bath gels; beauty creams for body care; body butter; body cream soap; body lotions; body milk; body oils; body scrub; body sprays; cologne; exfoliant creams; fragranced body care preparations, namely, shower gels, cream washes, bath scrubs; fragrances; perfumes; perfumes and colognes; perfumes and toilet waters; scented body lotions and creams; scented body spray; scented linen sprays; shower creams; shower and bath gel; eau de parfum; eau de toilette and eau de cologne; face and body beauty creams; non-medicated skin care preparation, namely, body mist; scented body lotions and creams, in Class 3.

 

On-line retail store services featuring subscription boxes containing scented body care/fragrances; on-line wholesale and retail store services featuring scented body care/fragrances, in Class 35.

 

The goods in Registration No. 4660065 are sparkling water.  The goods in Registration No. 4207176 are various furniture items.  The goods in Registration No. 5330206 are a variety of foods.

 

Applicant’s Class 35 services are as follows: providing an online marketplace connecting experts, consumers, and sellers; provision of an online marketplace for buyers of goods and services.

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). 

 

As is discussed below, some of applicant’s services are very broad and presumably encompass various retail type services featuring all kinds of goods.  In any case, all of applicant’s services are broad and, therefore, presumed to include those featuring goods identical to the goods listed in each registration.  Thus, applicant’s services appear highly related to the goods listed in each registration.

 

Significantly, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

Additionally, applicant’ services could presumably encompass on-line store services that are identical to those in Registration No. 5197576.  Please note that the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of information on a number of third-party marks establishing that the same entity commonly provides marketplace services and retail store or similar services in the same fields.  Thus, this evidence shows that the goods and/or services listed therein are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). 

 

Finally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

The foregoing, therefore, establishes that the goods/services of applicant and each registration are highly related or perhaps even identical in the case of the online retail store services listed in Registration No. 5197576.

 

Please Note:  The refusal as to Registration No. 5197576, 4660065, 4207176, and 5330206 applies only to Class 35.

 

B.     Registration No. 4733726

 

The goods and services in Registration No. 4733726 include the following:

 

Downloadable software for mobile phones and tablet computers for use in electronic storage of data; computer hardware and software for controlling the operation of digital electronic devices and for the reproduction, processing and streaming of audio, video and multimedia content, in Class 9.

 

Providing a search engine to allow users to preview and download information in the field of entertainment, social networking, advertising, marketing and promotion on a global computer network; hosting a web site on the internet that enables users to store, organize, track, monitor, and share information; providing search engines for obtaining data via communications networks; providing search engines for the Internet; provision internet search engines, namely, provision of customized search engines for others; providing non-downloadable software enabling users to search, locate and communicate with others via electronic communications networks for advertising, marketing and promotion; design and development of computer software; computer programming; providing technical information in the field of computer software development; information, advisory and consultancy services and the preparation of reports, all relating to the aforesaid services, in Class 42.

 

Applicant’s current Class 9 goods/services are “Software as a service (SAAS) services featuring software for e-commerce.”  These services are very broad and, therefore, presumed to include SaaS services featuring all kinds of e-commerce software with all kinds of functions that could be helpful in e-commerce.   Such e-commerce software services presumably include those that enables users to store, organize, track, monitor, and share information, those featuring a search engine, those for advertising, marketing and promotion purposes.

 

It also is noted that registrant’s Class 9 software could presumably be used in e-commerce and that registrant has the broadly identified services of “design and development of computer software” and “computer programming.”  Because the services are broadly identified, it must be presumed that registrant is designing, developing and programming software for e-commerce that provides the exact same functions as does applicant’s software. 

 

As noted above, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  In re Detroit Athletic Co., 903 F.3d at 1307, 128 USPQ2d at 1051; TMEP §1207.01(a)(ii).  Thus, applicant’s and registrant’s software/software services appear highly related if not identical.

 

Finally, it is noted that applicant’s goods/services have no restrictions as to nature, type, channels of trade, or classes of purchasers.  Thus, they are “presumed to travel in the same channels of trade to the same class of purchasers” as are registrant’s goods/services.  In re Viterra Inc., 671 F.3d at 1362, 101 USPQ2d at, 1908.

 

Please Note:  The refusal as to Registration No. 4733726 applies only to applicant’s goods/services presently listed in Class 9 (which appear to be properly classified in Class 42).

 

Doubt is Resolved in Favor of Registrant

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In light of the foregoing, registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Prior-filed, Pending Applications

 

In addition, the filing dates of pending U.S. Application Serial Nos. 88041128, 87884410, 87871523, 87871518, 87813443, 87813439, 87813432, 87874168, 87465336, 88199198, 86918755, 87874124, 87077697, 87307987, 86415344, and 86918755 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If applicant responds to the refusal(s) above, then applicant must also respond to the requirement(s)/refusal(s) set forth below.

 

2)     Identification of Goods/Services

 

Some of the wording in the identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant also must adopt the appropriate international classification number for the goods and/or services identified in the application.  The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services.  See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

Each class is addressed separately below.

 

Class 9

 

“Software as a service (SAAS) services” are services that must be properly classified in Class 42. Software that is properly classified in Class 9 comprises either software recorded on tangible computer media like CD-ROMs or downloadable software.  Services featuring online non-downloadable software are properly classified in Class 42, except that such services featuring game software or software for playing online games is properly classified in Class 41.

 

Here, applicant kindly indicated that the software featured is in the field of “e-commerce.”  However, the identification must be amended to specify the purpose or function of the software within the e-commerce field.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Applicant may substitute the following identification and classification for the goods/services presently listed in Class 9, if accurate.

 

Software as a service (SAAS) services featuring software for e-commerce, namely, software for use in ___________ [specify function of the software, e.g., for use in database management in the e-commerce field], in Class 42.

 

Class 35

 

The wording “providing an online marketplace connecting experts, consumers, and sellers” is indefinite and requires clarification.  It must clear what the consumers and sellers consume/sell, e.g., “goods and services,” “furniture,” “computers.” 

 

In addition, “connecting experts” is indefinite.  Online marketplaces are generally websites where third-parties provide a place where sellers offer items for sale and users/consumers have the opportunity to purchase them or they exchange items.  Here, it is not clear what the services involving “connecting experts” refers to.  Thus, clarification is required.

 

“Provision of an online marketplace for buyers of goods and services” is indefinite.  An online marketplace generally refers to a website that enables third party sellers and buyers to exchange items.  Because the identification mentions only “buyers” (and based on a review of the specimen), it appears that the services may be more in the nature of an online retail store service or similar type of online retail services.  If that is the case, then applicant must clarify the nature of the “marketplace”/retail type service and specify the field of the goods featured by such services.  Please also note that, when identifying retail store, wholesale store, online ordering services, etc., it is necessary to indicate the field of goods featured by such services.

 

Applicant may substitute the following identification for the services presently listed in Class 35, if accurate.

 

Providing an online marketplace for consumers and sellers of goods and services, which also connects consumers to the websites of experts that provide commercial information to consumers about the choice of products and services; provision of an online marketplace for buyers in the nature of an online retail store featuring ___________ [specify field of goods provided, e.g., sporting goods, clothing], in Class 35.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

3)     Specimens

 

A.     Introduction

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

For computer software services such as the providing of online nondownloadable software, an acceptable specimen may include an advertisement or website screen shot showing the mark used in the advertising of the services.  See TMEP §1301.04(a).

 

B.     Refusal – Specimens Show Use of Mark With Online Retail Store Services Rather Than The Goods/Services Listed In The Application

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, applicant’s good/services are as follows:

 

Providing an online marketplace connecting experts, consumers, and sellers; provision of an online marketplace for buyers of goods and services, in Class 35.

 

Software as a service (SAAS) services featuring software for e-commerce (listed in Class 9, but the proper class is Class 42).

 

With respect to the services presently in Class 35, the providing of an online “marketplace” generally involves a service provided to buyers and sellers of goods and services where they may engage in exchanging goods and services with other users.  Here, the specimens (which are the same for both classes) appear to show the mark used in connection with the providing of a traditional online retail store where the retail store offers the goods of others for purchase.  The specimens do not show a typical “marketplace” service.

 

It is noted, however, that the wording “provision of an online marketplace for buyers of goods and services” has been deemed unacceptable and that applicant has been advised that such services appear to encompass online retail store services.  If applicant clarified that the services are online retail store services featuring sporting goods or goods for skiing, then the specimen will be deemed acceptable for Class 35.

 

With respect to applicant’s software services, the specimen in no way advertises software for use by third parties.  Thus, the specimen simply fails to show the mark used in any way with software services (or with software goods). 

 

C.     Responding

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

(3)       As discussed above, for Class 35, applicant may amend the services for the “provision of an online marketplace for buyers of goods and services” to clarify that they are online retail store services featuring sporting goods.  In that case, the specimen will be deemed acceptable for Class 35.

 

For an overview of response options 1 and 2 referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Advisory

 

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.  

 

Please do not hesitate to contact the undersigned with any questions.

 

/MaureenDallLott/

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

United States Patent and Trademark Office

571-272-9714

maureen.lott@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 6/20/2019 FOR U.S. APPLICATION SERIAL NO. 88374513

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/20/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.