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:  August 18, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES

 

• Prior-Filed Application May Bar Registration
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Services Require Amendment
• Domicile Required
• U.S. Counsel Required

PRIOR-FILED APPLICATION MAY BAR REGISTRATION

The filing date of pending U.S. Application Serial No. 88433160 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

Regardless of whether applicant opts to address the prior-filed application identified above, applicant must respond to the refusal and requirements set forth below.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks identified in the table below.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applicant has applied to register the mark SONAR, for “social assistant planner; social appointment manager; social sphere; loyalty program services”.  Registration is refused because of a likelihood of confusion with marks identified below:

 

MARK	Reg. No.	Services
CAMPUS SONAR	5547301	Online media monitoring services for others, namely, using computer software to automatically collect online social media data, content, and information on customer-specified topics for marketing, advertising, and business purposes; analysis of online social media data, content, and information for others for marketing, advertising, and business purposes; market research and analysis services, namely, the provision of online social media monitoring and analysis services; consulting services in the field of online social media monitoring and analysis for business or commercial purposes; providing business information services in the fields of brand measurement, advertising effectiveness, and public opinion monitoring; providing business information in the field of online social media in Class 35
CAMPUS SONAR & design	5547299	Online media monitoring services for others, namely, using computer software to automatically collect online social media data, content, and information on customer-specified topics for marketing, advertising, and business purposes; analysis of online social media data, content, and information for others for marketing, advertising, and business purposes; market research and analysis services, namely, the provision of online social media monitoring and analysis services; consulting services in the field of online social media monitoring and analysis for business or commercial purposes; providing business information services in the fields of brand measurement, advertising effectiveness, and public opinion monitoring; providing business information in the field of online social media in Class 35
JWT SONAR	4283607	Conducting market research and analysis in the field of consumer behavior, attitudes, habits, and purchasing of products and services; providing an Internet website for the purpose of conducting market research and analysis in the field of consumer behavior, attitudes, habits, and purchasing of products and services in Class 35
IDG SONAR	4946952	Lead Generation, Advertising Services and Business Analysis in Class 35
MARKETING SONAR	3215658	Strategic marketing, namely, development of marketing strategies and concepts and marketing plan development, and business marketing consulting services, both for professionals and businesses in Class 35
SONAR	4304126	Telecommunications, namely, connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works; provision of access to digital music on the Internet; radio broadcasting services over the Internet; providing on line forums for transmission of casual, general interest messages among computer users and chat rooms for social networking; delivery of digital music by telecommunications; music broadcasting, transmission of podcasts with music; live broadcasting via the internet of music in Class 38
SONAR & design	3587183	education in the field of music, rendered through correspondence courses and video conference, training in the field of providing facilities for musical shows; entertainment services in the nature of musical shows; organizing community cultural activities in the nature of musical shows; organizing exhibitions for cultural purposes, namely, entertainment purposes such as musical shows; night clubs, discotheques and record production; audio recording of records; rental of karaoke equipment, rental of audio equipment; music composition services for others; disc jockey services for parties and special events; organization and providing of entertainment, namely, musical shows; multimedia entertainment services in the nature of recording, production and post-production services in the field of music; planning and conducting a series of music festivals and providing movie, television and video documentaries of such music festivals
SONAR ENTERTAINMENT & design	4870969	Entertainment services, namely, production and distribution of motion pictures and television programs; organizing live community sporting and non-musical cultural events; live appearances by sports celebrities, actors, and professional entertainers; special event planning for entertainment purposes; production of motion picture films and television programs, namely, television programs featuring sports footage, sports information, and cultural information, all for distribution via the global communication network; Entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; Entertainment services, namely, production and distribution of ongoing television programs in the fields of comedy, drama, family, mystery, reality and sports in Class 41
SONAR LIGHTS & design	4772404	Entertainment, namely, live music concerts; Entertainment, namely, live performances by a musical band; Production of musical sound recording; Production of sound and music video recordings; Providing a website for entertainment purposes featuring non-downloadable musical sounds and videos about a musical band; fan club services; providing entertainment information regarding music and live musical performances; online journals, namely, blogs in the fields of music and entertainment about a musical band; Providing on-line music, not downloadable in Class 41
SONARCHARTS	4385717	Electronic databases stored on electronic storage media and downloadable electronic databases featuring digitally encoded data representing maps and other geographic information, electronic charts for marine, mountain, road and outdoor navigation recorded on electronic storage media, and instruments for marine, mountain, road and outdoor navigation in the nature of electronic navigational and positioning apparatus and instruments in Class 41 and Design and development of computer software relating to the display of information in the field of navigation and recreation in Class 42
SONAR	4908171	Providing temporary use of on-line non-downloadable software and applications for use in helping businesses procure and analyze customer feedback in Class 42

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

• Registration Nos. 4304126 (SONAR), 4908171 (SONAR) and 3587183 (SONAR & design)

 

In the present case, applicant’s mark is SONAR and the wording in Registration Nos. 304126, 4908171 and 3587183 is SONAR.  The wording in these marks is identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because the wording is identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective services.  Id. 

 

The addition of the common black background and hash over the “O” in Registration 3587183 does not obviate the similarity.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Additionally, applicant’s mark is in standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, applicant’s mark may be presented in any style and/or with any design, including that used by registrant.

 

Therefore, applicant’s mark is confusingly similar to these registrants’ marks. 

 

• Registration Nos. 5547301 (CAMPUS SONAR), 5547299 (CAMPUS SONAR & design), 4283607 (JWT SONAR), 4946952 (IDG SONAR), 3215658 (SONAR MARKETING), 4870969 (SONAR ENTERTAINMENT & design), 4772404 (SONAR LIGHTS & design), 4385717 (SONARCHARTS)

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Here, applicant’s mark contains SONAR which is identical to SONAR in each of the registered marks creating a highly similar commercial impression.  The additional wording in each of the registered marks does not obviate the overall similarity.  Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registered marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Nor do the design elements in Registration Nos. 5547299, 3587183, 4870969, and 4772404 obviate the overall similarity.  As set forth above, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Additionally, applicant’s mark is in standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, applicant’s mark may be presented in any style and/or with any design, including that used by registrants.

 

In sum, given applicant’s mark contains SONAR, which is identical to SONAR in each of the registered marks, it follows that the marks create a highly similar commercial impression.

 

Comparison of the Services

 

Applicant’s services are identified as “social assistant planner; social appointment manager; social sphere; loyalty program services”. 

 

Registrants’ services are identified as follows:

 

Reg. No.	Services
5547301	Online media monitoring services for others, namely, using computer software to automatically collect online social media data, content, and information on customer-specified topics for marketing, advertising, and business purposes; analysis of online social media data, content, and information for others for marketing, advertising, and business purposes; market research and analysis services, namely, the provision of online social media monitoring and analysis services; consulting services in the field of online social media monitoring and analysis for business or commercial purposes; providing business information services in the fields of brand measurement, advertising effectiveness, and public opinion monitoring; providing business information in the field of online social media in Class 35
5547299	Online media monitoring services for others, namely, using computer software to automatically collect online social media data, content, and information on customer-specified topics for marketing, advertising, and business purposes; analysis of online social media data, content, and information for others for marketing, advertising, and business purposes; market research and analysis services, namely, the provision of online social media monitoring and analysis services; consulting services in the field of online social media monitoring and analysis for business or commercial purposes; providing business information services in the fields of brand measurement, advertising effectiveness, and public opinion monitoring; providing business information in the field of online social media in Class 35
4283607	Conducting market research and analysis in the field of consumer behavior, attitudes, habits, and purchasing of products and services; providing an Internet website for the purpose of conducting market research and analysis in the field of consumer behavior, attitudes, habits, and purchasing of products and services in Class 35
4946952	Lead Generation, Advertising Services and Business Analysis in Class 35
3215658	Strategic marketing, namely, development of marketing strategies and concepts and marketing plan development, and business marketing consulting services, both for professionals and businesses in Class 35
4304126	Telecommunications, namely, connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works; provision of access to digital music on the Internet; radio broadcasting services over the Internet; providing on line forums for transmission of casual, general interest messages among computer users and chat rooms for social networking; delivery of digital music by telecommunications; music broadcasting, transmission of podcasts with music; live broadcasting via the internet of music in Class 38
3587183	education in the field of music, rendered through correspondence courses and video conference, training in the field of providing facilities for musical shows; entertainment services in the nature of musical shows; organizing community cultural activities in the nature of musical shows; organizing exhibitions for cultural purposes, namely, entertainment purposes such as musical shows; night clubs, discotheques and record production; audio recording of records; rental of karaoke equipment, rental of audio equipment; music composition services for others; disc jockey services for parties and special events; organization and providing of entertainment, namely, musical shows; multimedia entertainment services in the nature of recording, production and post-production services in the field of music; planning and conducting a series of music festivals and providing movie, television and video documentaries of such music festivals
4870969	Entertainment services, namely, production and distribution of motion pictures and television programs; organizing live community sporting and non-musical cultural events; live appearances by sports celebrities, actors, and professional entertainers; special event planning for entertainment purposes; production of motion picture films and television programs, namely, television programs featuring sports footage, sports information, and cultural information, all for distribution via the global communication network; Entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; Entertainment services, namely, production and distribution of ongoing television programs in the fields of comedy, drama, family, mystery, reality and sports in Class 41
4772404	Entertainment, namely, live music concerts; Entertainment, namely, live performances by a musical band; Production of musical sound recording; Production of sound and music video recordings; Providing a website for entertainment purposes featuring non-downloadable musical sounds and videos about a musical band; fan club services; providing entertainment information regarding music and live musical performances; online journals, namely, blogs in the fields of music and entertainment about a musical band; Providing on-line music, not downloadable in Class 41
4385717	Electronic databases stored on electronic storage media and downloadable electronic databases featuring digitally encoded data representing maps and other geographic information, electronic charts for marine, mountain, road and outdoor navigation recorded on electronic storage media, and instruments for marine, mountain, road and outdoor navigation in the nature of electronic navigational and positioning apparatus and instruments in Class 41 and Design and development of computer software relating to the display of information in the field of navigation and recreation in Class 42
4908171	Providing temporary use of on-line non-downloadable software and applications for use in helping businesses procure and analyze customer feedback in Class 42

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

An applicant’s services presumably encompass all services of the type described.   See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Here, applicant’s overly vague and broadly identified services of identified as “social assistant planner, “social sphere” and “loyalty program services” encompass an enumerable number of services falling in a variety of classes, including the services identified in each of the registrations identified above which all relate to social event planning, social sphere technological or marketing-related services, and/or loyalty program related services.  Thus, applicant’s and registrants’ services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)). Additionally, the services of the parties have no restrictions as to channels of trade or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrants’ services are related.

 

In sum, upon encountering SONAR, used in connection with “social assistant planner; social appointment manager; social sphere; loyalty program services” and any of the marks identified in the tables above used in connection with their identified services, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusals, applicant must also respond to the requirement set forth below

 

IDENTIFICATION OF SERVICES REQUIRES AMENDMENT

 

The identification of services is indefinite and must be clarified because it could include services in more than one International Class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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 applicant insufficiently describes the following services in Class 38:

 

• The wording “social assistant planner” is indefinite because the nature of the services is not clear and is likely misclassified.  For example, applicant’s services may relate to the planning of social entertainment events, which are classified in Class 41 or services in the nature of personal concierge services for others classified in Class 45.  Thus, applicant must clarify the nature of the services and classify them properly.  Suggestions for amendment are set forth below.

 

• The wording “social appointment manager” is indefinite because the nature of the services is unclear.  Applicant must clarify the nature of the services by indicating they are in the nature of personal concierge services, if accurate, and specify the type of appointments being made, e.g., “Personal concierge services for others comprising making requested doctor's, dentist's, and hair appointments to meet individual needs”, and classify them properly. Suggestions for amendment are set forth below.

 

• The wording “social sphere” is overly vague, indefinite and overbroad because the nature of the services are unclear and it encompasses services in several different classes.  For example, these services could include “Providing marketing consulting in the field of social media” and/or “Providing business information in the field of social media” in Class 35, “Chatroom services for social networking” in Class 38, “Special event planning for social entertainment purposes” in Class 41, and “Providing a social networking website which features technology that enables users to give charitable financial gifts to others.” Thus, applicant must clarify the nature of the services and classify them properly.  Suggestions for amendment are set forth below.

 

• The wording “loyalty program services” is indefinite and overbroad because it encompasses loyalty program services classified in Class 35 such as “Business administration of consumer loyalty programs,” as well as “Loyalty program payment processing services” which are classified in Class 36.  Thus, applicant must clarify the nature of the services and classify them properly.  Suggestions for amendment are set forth below.

 

If accurate, the applicant may adopt (any or all of) the following identification of services.  New information is in bold format.  Deleted information is in strikethrough format.  See TMEP §1402.01.

 

• Class 35: Business administration of consumer loyalty programs;

 

• Class 36: Loyalty program payment processing services;

 

• Class 38: Social assistant planner; social appointment manager; Social sphere services, namely, ____ {specify any services related to telecommunications, e.g., chatroom services for social networking}; loyalty program services

 

• Class 41: Social sphere services in the nature of _____ {specify any social entertainment related services, e.g., organizing social entertainment events};

 

• Class 42: Social sphere services in the nature of creating an on-line community for registered users to ______ {indicate the purpose of the online community, e.g., participate in discussions, get feedback from their peers, form virtual communities, engage in social networking, etc.};
•  
• Class 45: Social appointment manager services in the nature of personal concierge services for others comprising making requested _______{indicate type of appointments, e.g., doctor's, dentist's, hair, etc.} appointments to meet individual needs; Social assistant planner services in the nature of concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs rendered together in a _______ {indicate environment, e.g., apartment complex, business conference, shopping center, etc.}.

 

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 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 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 already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 1 class.  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 fee 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 the additional requirements set forth below.

 

Domicile is Required

 

Applicant must provide his current domicile address.  The application record indicates that applicant is not a U.S. citizen, but an email address was provided as applicant’s domicile information, rather than a street address.  Information such as an email address or post office box is not acceptable as a domicile address because it does not identify the address of applicant’s physical permanent legal residence.  See 37 C.F.R. §§2.2(o), 2.189.  Thus, applicant must provide the physical street address of applicant’s domicile.  See 37 C.F.R. §2.189. 

 

To provide applicant’s domicile address.  After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.

 

Applicant must respond to the additional requirement set forth below.

 

U.S. COUNSEL IS REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney.  The application record indicates that applicant’s domicile is outside of the United States in France, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

RESPONDING TO THE OFFICE ACTION

 

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  

 

 

Ashley D. Hayes

/Ashley D. Hayes/

Examining Attorney

Law Office  108

(571) 272-2826

ashley.hayes@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 August 18, 2019 for

U.S. Trademark Application Serial No. 88441450

 

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. 

 

 

Ashley D. Hayes

/Ashley D. Hayes/

Examining Attorney

Law Office  108

(571) 272-2826

ashley.hayes@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 August 18, 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.”