Offc Action Outgoing

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:  September 18, 2019

 

This Office action is in response to applicant’s communication filed on August 26, 2019.

 

In the initial Office action, the examining attorney required an amendment to the identification of services.

 

In its response, the applicant amended the identification of services.  Applicant’s response has been received and made of record.

 

The requirement for an acceptable identification of services is maintained and now made FINAL for the reasons set forth below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Final: Indefinite Identification of Services

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

By its response, applicant proposes to amend the identification of services to read “Education, coaching, and training services, namely, providing classes, workshops, and training in the fields of parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment and distribution of course material in connection therewith; providing educational information, news and commentary in the fields of parenting strategies and skills, stress management, communication, mindfulness, the military, military life and military life stressors and transitioning from military life to civilian life; providing a website featuring online educational resources, and information, namely, online resource guides, online audio, video, and publications in the nature of online articles and online forms, and regarding parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment” in International Class 41.

 

The wording “providing educational information, news and commentary in the fields of parenting strategies and skills, stress management, communication, mindfulness, the military, military life and military life stressors and transitioning from military life to civilian life” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Classification of educational information services is based on the subject matter of the information provided rather than the intention that the information provided be educational.  See TMEP §1402.11(b).  For example, “providing educational information in the field of finance” is classified in International Class 36, “providing educational information in the field of travel” is classified in International Class 39, “providing information relating to education services” is classified in International Class 41, and “providing a website featuring educational information in the field of medicine” is classified in International Class 44.  Thus, as previously explained, if applicant chooses to retain the identified information services, then applicant must further clarify each of the above subjects to enable proper classification thereof.  For example, providing educational information in the field of parenting concerning intra-family relationships is properly classified in International Class 45, while educational information in the field of parenting concerning the health of children is properly classified in International Class 44.

 

Similarly, the wording “providing a website featuring online educational resources, and information, namely, online resource guides, online audio, video, and publications in the nature of online articles and online forms, and regarding parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment” in the identification of services is indefinite and must be clarified because the inclusion of “and information” renders the subject matter (and therefore, the classification of the services) unclear.  Additionally, applicant must further specify the nature of the resource materials and whether they are non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Applicant may adopt the following identification of services, if accurate [the examining attorney’s suggestions appear in bold, underlined text]:

 

            Class 41:   Education, coaching, and training services, namely, providing classes, workshops, and training in the fields of parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment and distribution of course material in connection therewith; providing educational information, news and commentary in the fields of parenting strategies and skills concerning {specify Class 41 subject matter, e.g., education of children, entertainment of children}; providing a website featuring online educational resources and information, namely, non-downloadable publications in the nature of online resource guides, online articles and online forms in the fields of parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment; providing a website featuring online educational resources and information in the nature of non-downloadable audio and video recordings featuring parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment

 

            Class 44:   providing educational information, news and commentary in the fields of parenting strategies and skills concerning the health of children and stress management

 

            Class 45:   providing educational information, news and commentary in the fields of interpersonal communication, mindfulness, the military, military life and military life stressors and transitioning from military life to civilian life

 

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).

 

ID Manual Online

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.

 

Multiple Class Application Requirements

 

The application identifies 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one 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.

 

This requirement is maintained and now made FINAL.

 

Proper Response to Final Action

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  providing educational information, news and commentary in the fields of parenting strategies and skills, stress management, communication, mindfulness, the military, military life and military life stressors and transitioning from military life to civilian life; providing a website featuring online educational resources, and information, namely, online resource guides, online audio, video, and publications in the nature of online articles and online forms, and regarding parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment, in International Class 41.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only: 

 

            Class 41:   Education, coaching, and training services, namely, providing classes, workshops, and training in the fields of parenting strategies and skills, stress management, communication, mindfulness, military life stressors, and reintegration from military deployment and distribution of course material in connection therewith

 

 

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 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. 

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 18, 2019 for

U.S. Trademark Application Serial No. 88378248

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Kertgate, Amy

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 18, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”