Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 10, 2019

 

This Office action is in response to applicant’s communication filed on August 15, 2019.  In the Office Action of May 22, 2019, applicant was required to amend the description of the mark and to disclaim the word “connect.”  In the August 15, 2019 response, applicant satisfactorily addressed the description of mark issue by both amending a description of mark and submitting an amended drawing of the mark.  Applicant also submitted an argument against the descriptiveness of the word “CONNECT” when viewed in light of the services offered.  In light of that argument, the requirement for a disclaimer of “CONNECT” is withdrawn, but applicant’s representations regarding their services raises new issues to be addressed.

 

In the communication filed on August 15, 2019, applicant also deleted “preparation of customized promotional and merchandising materials for others” from the identification of services in International Class 36.

 

SUMMARY OF ISSUES:

• Refusal:  Activities Identified are not a Registrable Service

 

1. Refusal:  Activities Identified are not a Registrable Service

 

Registration is refused because the activities recited in the identification of services, when viewed in conjunction with applicant’s response filed on August 15, 2019, are not registrable services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§904.07(b), 1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:

 

(1)       A service is a real activity, not an idea, concept, process, or system.

 

(2)       A service is performed primarily for the benefit of someone other than the applicant.

 

(3)       A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).

 

In this case, the description set forth in the identification of services is as follows: 

 

Retail store services featuring office supplies, cleaning and janitorial supplies, break-room supplies, safety supplies, printing products, promotional products, office equipment, electronic and technology products, and office furniture; retail store services featuring promotional general merchandise and general consumer goods with company brand logos and tag lines made to the order and specification of the customer; promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise; retail store services featuring a wide variety of consumer goods; retail store services featuring a wide variety of consumer goods for others; retail supply ordering services for a wide variety of consumable goods, supplies and equipment regularly used in offices, schools and homes; providing consumer and business product information via the internet; business services, namely, sourcing of strategic goods and services at customers' specific request; preparation of customized promotional and merchandising materials for others; promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise

 

In the communication filed on August 15, 2019, applicant stated the following in the argument against a disclaimer of the word “connect”:

 

Applicant is also not “promoting the goods and services of others.”  Applicant is providing promotional services that are very specifically identified in the description are services as “providing customized specialty apparel, promotional items and incentive merchandise” that allow the seller (applicant’s customer) to promote itself.  Applicant is not promoting any of its customer’s services.  It is merely providing merchandise to the specification and order of the customer for the customer to advertise its own goods/services.  It is applicant’s customer, not applicant, that is ”promoting” or, as defined by the examining attorney, “furthering the growth and development” of its own products and services.

 

Based upon the above statements, the activities “promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise” and “promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise” listed by applicant are not registrable services because applicant admittedly is not “promoting the goods and services of others.” 

 

Further, as applicant is providing merchandise for customers to promote and advertise their own goods and services, applicant is not providing a service that is a real activity and they are not providing a service performed primarily for the benefit of someone else.  Providing others with goods with which they may self-promote is not a service in commerce.  Applicant is not providing a service that is sufficiently separate and qualitatively different from its principal activity, specifically, retail store services, as the stated activity is merely incidental to its larger business.  Accordingly, registration is refused because the aforementioned activities recited in the identification of services, when viewed in conjunction with applicant’s response filed on August 15, 2019, are not registrable services as contemplated by the Trademark Act.

 

Applicant may cure this refusal by deleting the following services from Class 35:  “promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise” and “promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise.”

 

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

 

Response guidelines:

 

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.

 

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. 

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@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 10, 2019 for

U.S. Trademark Application Serial No. 88394011

 

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. 

 

 

Edward Germick

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@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 10, 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.”