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:  January 10, 2020

 

 

This Office action is in response to applicant’s communication filed on December 30, 2019.

 

In a previous Office action dated June 28, 2019, applicant was required to satisfy the following requirements: amend the identification of goods and/or services, satisfy multiple-class application requirements, and properly sign and verify the application.

 

Based on applicant’s response, the trademark examining attorney notes that the requirement to properly sign and verify the application has been satisfied.  See TMEP §§713.02, 714.04. 

 

Further, for the reasons stated below, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Classification and Identification of Services

• Multiple-Class Application Requirements

 

Classification and Identification of Services

 

Particular wording in the identification of services for International Class 35 is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For instance, the wording “Providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities,” “providing office support services,” and “providing an on-line searchable database for the sale of goods and services of others” is indefinite because it does not make clear what the services are.

 

Identifications of goods and services must be clear enough to enable trademark examining attorneys to reach informed judgments concerning likelihood of confusion, and also provide adequate notice to third parties as to the scope of the applicant’s rights in the mark. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The trademark examining attorney notes applicant’s argument that “the phrase “providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities” in Class 35 that Examiner considers to be indefinite and too broad has been accepted in other applications filed by the Applicant and in recently registered third-party registrations.”  For the following reasons, this argument is not persuasive.  

 

Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

For instance, it is noteworthy that the registrations and applications referenced by applicant in support of its argument were all filed either in 2015 or 2016.  However, the ID Manual states that the entry “Providing co-working facilities equipped with office equipment” was deleted on 01-01-2017 in compliance with the International Classification of Goods and Services for the Purposes of the Registration of Marks Under the Nice Agreement (Nice Classification) 11-2017.

 

Moreover, the USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

The wording “business consultation services in the nature of office space design” [emphasis added] in the identification of services for International Class 35 must be clarified because it does not make clear what the services are and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass interior design services in Class 42 and business consultation services in Class 35. 

 

The wording “planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties for business purposes” in the identification of services for International Class 35 is indefinite and must be clarified because applicant must specify that these are services in the nature of business administration, business management, or business project management services to justify classification in Class 35.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Further, particular wording in the proposed amendment to the identification for International Class 35 is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the services as follows:  “providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors.”

 

However, the proposed amendment identifies the following services:  “providing an on-line searchable ordering guide featuring goods and services of others being offered for sale.”  

 

This portion of the proposed amendment is beyond the scope of the original identification because the wording in the original identification is more specific and narrower in scope and effect than the wording in the proposed amendment.

 

Applicant may substitute the following wording, if accurate:

 

Class 035:  Rental of desks, office equipment, printers and telecommunications equipment in co-working facilities; proving facilities for business administration equipped with private offices, mailroom, kitchen, meeting rooms and other office amenities; providing office support staff services of a receptionist; incubation services, namely, providing work space containing business equipment and other office amenities to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others; providing office support staff services; online business networking services; business consultation services in the field of office space design; business management and organization consultancy; business data analysis; market analysis; market analysis and research services; real estate marketing analysis; providing electronic tracking of real estate assets to others for business purposes; business administration services featuring planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties for business purposes; providing office support staff services; business project management services for others; business consulting services in the fields of spatial layout and infrastructure architecture and interior design; business consulting services in the field of spatial management to optimize business process efficiency and decision-making; computer-aided optimization and management, namely, managing logistics and physical spaces for business purposes; retail convenience stores and on-line retail convenience stores; providing an on-line searchable database featuring goods and services of others being offered for sale; providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; gift and sundries retail store services; business management; business administration; office functions

 

Class 036:  No changes suggested.  Identification of services acceptable as currently worded.

 

Class 041:  No changes suggested.  Identification of services acceptable as currently worded.

 

Class 042:  Business consultation services in the nature of office space design, namely, office space interior design

 

Applicant’s 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.

 

Multiple-Class Application Requirements

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 four classes; however, applicant submitted a fee(s) sufficient for only three classes.  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response Options for Final Office Action

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Leslie Ann Thomas-Riggs/

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

USPTO, Law Office 125

(571) 272-5469

leslie.thomas-riggs@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 January 10, 2020 for

U.S. Trademark Application Serial No. 88424376

 

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. 

 

 

/Leslie Ann Thomas-Riggs/

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

USPTO, Law Office 125

(571) 272-5469

leslie.thomas-riggs@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 January 10, 2020, 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.”