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:  July 12, 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.

 

SEARCH RESULTS

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).

 

IDENTIFICATION OF SERVICES CLASS 44

The identification of goods and services for International Classes 16, 20 and 35 are acceptable.  However, the wording of the identification of services for International Class 44 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the applicant must indicate with more detail the exact nature of the service activity in order to properly classify the services.  Furthermore, this wording includes misclassifications.  Please note, “information services” are classified based on the subject matter of the information provided.  TMEP §1402.11(b).  

 

The following are examples of acceptable identifications for information services:  “providing consumer product information relating to diaper changing stations” is classified in International Class 35; however, “providing hygienic care information relating diaper changing stations in men's rooms and public facilities” is classified in International Class 44.  Additionally, the wording “sanitary information” is vague and may identify “providing sanitation information” in International Class 37. 

 

Please note, the inclusion of all possible ways to disseminate said information would normally be unnecessary and superfluous.  However, since the applicant has included it in the identification, it must be amended to make it acceptable, for removing it would constitute an expansion of the scope of the services.  See 37 C.F.R. §2.71(a); TMEP §1402.06. Firstly, open-ended wording such as “and other forms…” is indefinite and unacceptable.  Further note, “marketing services” are always classified in International Class 35.  Accordingly, all references to “marketing” must be removed from the class 44 identification.      

 

Finally, the wording “providing information on…the need for hygienic and sanitary diaper changing stations in men's rooms and public facilities and the expectation that men's rooms and public facilities need diaper changing stations because men change diapers, too” is not strictly an information service.  Indeed, these activities are in furtherance of the “promoting awareness of the need for hygienic and sanitary diaper changing stations, etc.” services already listed by the applicant in International Class 35.  Accordingly, this wording should be removed by the applicant.

 

Accordingly, the applicant may substitute the following wording for International Classes 35 and 44, if accurate.  Please note, the suggested amended wording and/or information for creating an acceptable identification appears in bold font.

 

Promoting awareness of the need for hygienic and sanitary diaper changing stations in men's rooms and public facilities, and the expectation that men's rooms and public facilities need diaper changing stations because men change diapers, too; providing consumer product information relating to diaper changing stations (International Class 35)

 

Providing hygienic information relating diaper changing stations in men's rooms and public facilities via indirect methods of communications, namely, social media and Internet search engines (International Class 44)

           

The applicant should note that the above suggested identification of services is acceptable as written.  Any alteration may render it unacceptable.  Accordingly, if the applicant wishes to amend the services differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

Please further note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP § 1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the original identification.

 

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.

 

CLASSIFICATION

Some of the services are classified incorrectly.  The applicant must classify the services as specified above.  Proper classification of services 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)).

 

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  

 

 

/Geoffrey Fosdick/

Trademark Attorney

Law Office 111

U.S. Patent & Trademark Office

571 272 9161

geoffrey.fosdick@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 July 12, 2019 for

U.S. Trademark Application Serial No. 88410069

 

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. 

 

 

/Geoffrey Fosdick/

Trademark Attorney

Law Office 111

U.S. Patent & Trademark Office

571 272 9161

geoffrey.fosdick@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 July 12, 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.”