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:  October 09, 2019

 

This Office action is supplemental to and supersedes the previous Office action issued on September 16, 2019, in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the services currently listed in Class 42 are misclassified.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated September 16, 2019.  The issues raised in the previous September 16, 2019, Office action is/are as follow and is/are maintained:  Identification of Services requires amendment. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Identification and Classification of Services

 

IDENTIFICATION OF GOODS/SERVICES      

 

Applicant must clarify the following wording in the identification of services because it is indefinite and/or too broad:

• “Vocational guidance and employment related training, including resume development, job search strategies, interviewing for jobs, and general skills necessary for the workplace, such as co-worker communication, reliability, collaboration, dress, and punctuality” in International Class 41 is indefinite and overbroad as it is unclear whether the applicant is providing information concerning employment (in Class 35) or career counseling (in Class 42). For example, “resume preparation” and “employment counseling and recruiting” are in Class 35, while “Charitable services, namely, providing vocational guidance to indigent persons seeking employment” is in International Class 41.
• “Providing training and technical assistance such as implementing effective community-based activities, promoting community inclusion, person-centered practices, and building community connections, in the nature of charitable services to persons and organizations serving the needs of elderly, disabled, and homeless persons” is indefinite and overbroad because the listed services do not appear to be “training and technical assistance.” “Training and technical assistance” could refer to “Technical support services, namely, installation, administration, and troubleshooting of web and database applications” in International Class 37, “Charitable services, namely, providing training in the field of professional, personal, and leadership development” is in International Class 41, and “Technical advice relating to operation of computers” is in International Class 42
• “Consulting services for the elderly, disabled, and homeless persons on the use of technology,  namely, assistive technology to maximize independent living” in International Class 42 is indefinite as the nature of the services are unclear and overbroad as this entry could refer to “Technical assistance services in the field of charitable-business operations featuring providing assistance to the needy and consultation services related thereto rendered to service-provider organizations, namely, providing business advice and assistance to corporations and charitable organizations” is in International Class 35 or “Computer education and training for the elderly, disabled, and homeless persons” in International Class 41

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Additionally, Applicant has classified “Charitable services, namely, providing food to needy persons” in International Class 42; however, the proper classification is International Class 43.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class, (2) deleting “Charitable services, namely, providing food to needy persons” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate (with changes bolded for clarity): 

 

International Class 35: Employment counseling; promoting awareness and the interests and welfare of elderly, disabled, and homeless persons; Resume preparation; Technical assistance services in the field of charitable-business operations featuring providing assistance to the needy and consultation services related thereto rendered to service-provider organizations, namely, providing business advice and assistance to corporations and charitable organizations

 

International Class 36: Home remodeling for elderly and disabled persons

 

International Class 37: Technical support services, namely, installation, administration, and troubleshooting of web and database applications

 

International Class 39: Providing transportation to elderly, disabled, and homeless persons

 

International Class 41: Charitable services, namely, providing vocational guidance to indigent persons seeking employment; Charitable services, namely, providing training in the field of professional, personal, and leadership development; career counseling,  namely, exploring and defining career interests, and providing advice concerning education options and work experiences to pursue career opportunities; Computer education and training for the elderly, disabled, and homeless persons

 

International Class 42: Technical advice relating to operation of computers

 

International Class 43: Providing temporary housing to elderly, disabled, and homeless persons; providing elder care; providing temporary shelter, food, and clothing for the homeless; respite care services in the nature of providing temporary housing for dependent elderly or disabled persons to provide relief for their permanent caregivers; retirement home services; mobile café services for providing food and drink; Charitable services, namely, providing food to needy persons

 

International Class 44: Providing long-term care facilities for others, namely, elderly, disabled, and homeless persons; art therapy; behavioral health services; respite care services in the nature of home nursing aid services; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; physical habilitation services; providing news and information in the field of medicine

 

International Class 45: Providing personal support services for caregivers of elderly, disabled, and homeless persons, namely, companionship and emotional support; non-medical personal care services for assisting with daily living activities of elderly, disabled, and homeless persons; charitable services, namely, providing clothing to needy persons; non-medical in-home personal care services for assisting with daily living activities of children, teenagers, young adults, people with disabilities, and the elderly

 

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).

 

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 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 goods and/or services that are classified in at least nine classes; however, applicant submitted a fee(s) sufficient for only eight 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant must respond to all issues raised in this Office action and the previous September 16, 2019, Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

RESPONSE GUIDELINES

 

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  

 

 

/Taylor Singer/

Taylor Singer

Examining Attorney

Law Office 126

571-270-3964

taylor.singer1@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 October 09, 2019 for

U.S. Trademark Application Serial No. 88425051

 

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. 

 

 

/Taylor Singer/

Taylor Singer

Examining Attorney

Law Office 126

571-270-3964

taylor.singer1@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 October 09, 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.”