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 04, 2019

 

 

Phone/Email Response Suggested:

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

Introduction:

 

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 of Office’s Database of Marks:

 

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).

 

Summary of Issues:

 

• Disclaimer Required;
• Identification of Services – Amendment Required; and
• Bar Information Required.

 

Disclaimer Required:

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of a characteristic, feature, or purpose applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached dictionary evidence shows that “NATIONWIDE” means “[t]hroughout a whole nation”, “MARKETING” means “[t]he strategic functions involved in identifying and appealing to particular groups of consumers, often including activities such as advertising, branding, pricing, and sales”, and “GROUP” means “[a] number of individuals or things considered or classed together because of similarities”.

 

In addition, the term “MARKETING” is used in applicant’s identification of services: “Business marketing and consulting services for retailer members of the cooperative” (emphasis added). By using this term in the identification of services, the applicant has recognized that these terms are the common commercial or generic name of these services generally understood by the average consumers in the United States. See TMEP §1402.01.

 

Therefore, taken together, “NATIONWIDE MARKETING GROUP” would be perceived as describing a characteristic, feature, or purpose applicant’s services, i.e., applicant’s marketing services for individuals classed together because of similarities throughout a whole nation.

 

Furthermore, the trademark examining attorney has attached evidence from third party marketing service providers using this wording to refer to marketing services, which demonstrates a consumer’s knowledge of the descriptiveness of the terms as describing applicant’s marketing services. Specifically:

• Olive Group has an article entitled “What Can a Nationwide Marketing Group Do For Me?” (emphasis added) that states “So you’re thinking about hiring a nationwide marketing group to help promote your brand on a regional or national level, but are on the fence about whether it will truly benefit your business.” (emphasis added);
• Sprout Social has a “Franchise Marketing Guide” (emphasis added) that states “Curate relevant company and industry news, product updates, job openings and more. Whether you’re part of a nationwide company marketing group, a co-op initiative, or a franchise-level marketing effort, you’ll see better success when you supply your employee advocates with highly shareable content.” (emphasis added); and
• Epicor’s website states “THE UNITED GROUP, established in 1983, is a nationwide buying group owned and directed by independent distributors who target the janitorial/sanitary, foodservice, industrial-packaging and safety equipment & supplies markets.” (emphasis added).

 

All the evidence demonstrates that the wording “NATIONWIDE MARKETING GROUP” is descriptive of a characteristic, feature, or purpose applicant’s services, i.e., applicant’s marketing services for individuals classed together because of similarities throughout a whole nation.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “NATIONWIDE MARKETING GROUP” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Identification of Services – Amendment Required:

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wording listed below from the identification of services is indefinite and must be clarified for the reasons stated.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “cooperative buying service of consumer electronics, consumer appliances, televisions, furniture and other goods for retail members of cooperative” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the purpose of the cooperative, e.g., “Cooperative buying services for retail members of the cooperative featuringconsumer electronics, consumer appliances, televisions, furniture, and other goods”.  See TMEP §1402.01.

 

To address the above issues, applicant may adopt any or all of the following identifications, with the necessary information added, if accurate (proposed changes shown in bold typeface; proposed deletions shown in strikethrough):

 

International Class 035: ): Cooperative buying services for retail members of the cooperative featuring of consumer electronics, consumer appliances, televisions, furniture and other goods for retail members of cooperative; Business marketing and consulting services for retailer members of the cooperative

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Bar Information Required:

 

Attorney bar information required.  Applicant’s attorney has provided the name of the U.S. state of his bar membership. Applicant’s attorney must also provide the following bar information:  (1) his bar membership number, if the bar provides one; and (2) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

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.

 

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  

 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@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 04, 2019 for

U.S. Trademark Application Serial No. 88427479

 

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. 

 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@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 04, 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.”