| To: | ARCH VIRTUAL, LLC (james@jkolaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88415370 - ACADICUS - N/A |
| Sent: | July 19, 2019 06:01:17 PM |
| Sent As: | ecom113@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88415370
Mark: ACADICUS
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Correspondence Address:
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Applicant: ARCH VIRTUAL, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 19, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS – NO CONFLICTING MARKS FOUND
SUMMARY OF ISSUES
(1) Amendment of Identification of Goods and Services
(2) Specimen Refusal – CLASSES 41 and 42 ONLY – New Specimen or Amendment of Filing Basis Required
(3) Partial Abandonment Advisory
AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The identification of services in International Class 41 must be clarified because the wording “Educational services, namely, providing on-line courses, seminars, interactive classes, and peer to peer instruction and grading in the field of secondary, post-secondary and skills education” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. First, the wording “grading” is unclear. Applicant must clarify the nature of these services, such as academic performance evaluation. Next, “secondary” and “post-secondary” are levels not fields of instruction. Therefore, applicant must specify that the educational services are provided at secondary and post-secondary levels of instruction. Third, “skills” is not a sufficiently definite specification of the subject matter and/or field of educational services. Applicant must specify the field of these educational services with greater specificity, such as beauty skills.
Additionally, the identification “educational services, namely, both prerecorded and live demonstration and instruction, automated evaluation, instructor reviewed evaluation, peer to peer instruction and evaluation” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. First, the wording “evaluation” is unclear. Applicant must clarify the nature of these services, such as academic performance evaluation. Second, applicant must specify the subject matter and/or field of these educational services, such as emergency response procedures.
Additionally, the identification “providing training of students for certification in academic and skills disciplines at the secondary and post-secondary level” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. First, the wording “students’ is not a sufficiently definite specification of the groups being trained. Applicant must specify the group being trained with greater specificity, such as engineers. Next, “academic and skills disciplines” is not a sufficiently definite specification of subject matter and/or field of these educational services. Applicant must specify the subject matter and/or field of these educational services with greater specificity, such as emergency response procedures.
Additionally, the identification “tutoring at the secondary and post-secondary and skills level” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. Applicant must specify the nature of these services, such as education services. Next, applicant must specify the subject matter and/or field of these educational services, such as emergency response procedures. Lastly, “skills” is not a level. “Secondary” and “post-secondary” are levels, however, “skills” should be deleted from the list of levels.
Specific guidance for all requirements has been provided below.
Applicant may adopt the following wording, if accurate:
Class 9 – No change
Class 41 – Educational services, namely, providing on-line courses, seminars, interactive classes, and peer
to peer instruction and grading in the nature of academic performance evaluation in the field of all at the {indicate specific level, e.g.,
secondary, and post-secondary} level and all in the field of and {specify type of skills, e.g., beauty skills} education; Educational services, namely, providing both continuing prerecorded and live
demonstration and instruction, automated academic performance evaluation, instructor reviewed academic performance evaluation, peer to
peer instruction and evaluation all in the field of {specify subject matter, e.g., emergency response procedures}; Educational
services, namely, providing training of {specify the group being trained, e.g., engineers} students for certification in the field of {specify the
field, e.g., emergency response procedures} academic and skills disciplines at the secondary and post-secondary level; Education services, namely, tutoring
in the field of {specify the field, e.g., emergency response procedures} and at the secondary and post-secondary and skills levels
Class 42 – No change
Stylized wording indicates changes.
These suggestions are merely illustrative, not exhaustive of all the types of goods and/or services and proper classifications thereof which applicant might have intended to identify. These suggestions are based upon the examining attorney’s review of the application and determination of some of the goods and/or services applicant is most likely to offer. If applicant intended to identify goods and/or services other than those suggested above, applicant must so specify and classify these goods and/or services accordingly.
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.
NEW SPECIMEN REQUIRED – CLASSES 41 AND 42 ONLY – NEW SPECIMEN OR AMENDMENT OF FILING BASIS REQUIRED
The specimen references how consumers can “capture instructional content . . . create and record demonstrations, simulations, presentations, and multi-user events,” explains the effectiveness of “VR training” and notes that there is “a steadily increasing demand for quality VR training and simulation content,” and invites consumers to use applicant’s “library of scenes, equipment, people that can be used to quickly create a scene, plus the ability to capture 3D recordings of demonstrations and training by instructors and subject matter experts . . . The 3D recording feature enables instructors and subject matter experts to easily capture immersive 3D recordings of their demonstrations and instructions.” The specimen does not, however, make any reference to educational instruction offered by the applicant. Rather, the specimen describes a service that allows consumers to record their own educational instruction. That is a different service from applicant’s provision of educational instruction. Although the specimen reflects a “SIM LIBRARY” on page 6, the specimen does not explain the nature of the SIMs, and it is unclear from the specimen whether these SIMs are educational in nature.
Additionally, any references to software development seem to refer to applicant’s Class 9 “downloadable computer software development tools” and development to be performed by the consumer using these tools. For the applied-for mark to be registrable in connection with applicant’s Class 42 services, (“Design and development of computer software for virtual environments and storage of data for creating virtual environments”), applicant would have to perform these services for others. Applicant’s design and development of its own computer software development tools is not such a service.
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. 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).
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 or prior to the filing of the amendment to allege use.” 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.
For an overview of both response options 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.
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 41 and 42 will be deleted from the application:
Class 41 – Educational services, namely, providing on-line courses, seminars, interactive classes, and peer to peer instruction and grading in the field of secondary, post-secondary and skills education; educational services, namely, both prerecorded and live demonstration and instruction, automated evaluation, instructor reviewed evaluation, peer to peer instruction and evaluation; providing training of students for certification in academic and skills disciplines at the secondary and post-secondary level; tutoring at the secondary and post-secondary and skills level
Class 42 – Design and development of computer software for virtual environments and storage of data for creating virtual environments
In such case, the application will then proceed only with the following goods in International Class 9:
Class 9 – Downloadable computer software development tools
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE GUIDELINES
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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
/Dana Dickson/
Examining Attorney
Law Office 113
(571) 270-7552
dana.dickson@uspto.gov
RESPONSE GUIDANCE