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 19, 2019

 

 

This Office action is supplemental to and supersedes the previous Office action issued on August 1, 2019 in connection with this application.  Based on information in applicant’s response, the trademark examining attorney now issues the following new requirement:  multiple-class application requirements.  See TMEP §§706, 711.02. 

 

In a previous Office action dated August 1, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  identification of services requirement. 

 

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

 

• Identification of services requirement
• Multiple-class application requirements

 

Identification of Services Requirement

 

The wording “Online educational services, namely, providing online study guides and learning tools” in the identification of services is indefinite and must be clarified because the nature of the study guides and learning tools is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must identify each specific type of learning tool.  

 

The wording “Providing an online computer database of educational information across a variety of academic, professional, and personal interest fields, namely science, mathematics, history, languages, computer science and technology, sports and hobbies, arts and humanities, literature, medicine, law, occupational and professional certifications, standardized testing, literature, and social sciences” in the identification of services for International Class 041 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Providing databases is a service that is classified in the service class of the subject matter of the database.  The subject matter should be set forth so that it connects the content to a service for accurate classification.  All information can be characterized as instructional or educational. Thus, describing information as “instructional” or “educational” is not sufficient to justify classification in International Class 041.  See TMEP 1402.11(b)

 

In particular, the wording “Providing an online computer database of educational information across a variety of academic, professional, and personal interest fields, namely science, mathematics, history, languages, computer science and technology, sports and hobbies, arts and humanities, literature, medicine, law, occupational and professional certifications, standardized testing, literature, and social sciences” could encompass “Providing an online computer database of educational information in the field of testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of {indicate the field of use} to determine conformity with occupational and professional certification standards” in International Class 042, “Providing an online computer database of educational information in the field of hobbies, namely, floral design” in International Class 044, and “Providing an online computer database of educational information featuring legal information” in International Class 045.

 

Applicant may substitute the following wording, if accurate:  

 

International Class 041:  Online educational services, namely, providing online non-downloadable study guides and learning tools, namely, online non-downloadable flash cards; Providing an online computer database of educational information in the academic fields of science, mathematics, history, languages, computer science and technology, arts and humanities, literature, medicine, law and social sciences for the purpose of academic study; Providing an online computer database of educational information in the field of sports and standardized testing

 

International Class 042:  Providing an online computer database of educational information in the field of testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of {indicate the field of use} to determine conformity with occupational and professional certification standards

 

International Class 044:  Providing an online computer database of educational information in the field of hobbies, namely, floral design

 

International Class 045:  Providing an online computer database of educational information featuring legal information

 

Applicant’s goods and 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 services or add goods and 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 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 services will further limit scope, and once goods and 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 references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fee or (b) restrict the application to the number of classes covered by the fee already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for International Class 041; and applicant needs a specimen for International Classes 042, 044, and 045.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each requirement in this Office action.  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 requirements 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  

 

 

Snabb, Sandra

/Sandra Snabb/

Examining Attorney

Law Office 120

571-272-4633

Sandra.Snabb@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 19, 2019 for

U.S. Trademark Application Serial No. 88430191

 

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. 

 

 

Snabb, Sandra

/Sandra Snabb/

Examining Attorney

Law Office 120

571-272-4633

Sandra.Snabb@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 19, 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.”