To: | Anderson Zurmuehlen & Co., P.C. (rgriffin@crowleyfleck.com) |
Subject: | U.S. Trademark Application Serial No. 88442184 - AZ LEVERAGE - 011314-012 |
Sent: | August 15, 2019 02:02:15 PM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88442184
Mark: AZ LEVERAGE
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Correspondence Address:
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Applicant: Anderson Zurmuehlen & Co., P.C.
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Reference/Docket No. 011314-012
Correspondence Email Address: |
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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 15, 2019
INTRODUCTION
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).
The identification as an outsource service provider is broad as it may include services in other classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Generally, outsourcing services involve arranging of service contracts or procurement of goods for others. Outsource service provider activities are classified according to nature/purpose of the outsourced service being rendered. Here, applicant’s outsource provider services must be classified according to the field (e.g., human resources and business services are in class 35, finance is in class 36, information technology is in class 42, etc.).
Also, the wording “employee benefits administration” is broad because it may include services in other classes (e.g., employee benefits other than insurance or finance plans is in class 35, such as concerning child care, parking, etc.; and administration of employee financial or insurance benefits is in class 36).
Applicant must further specify the type or nature of its “Outsource service provider in the field of contract Chief Financial Officer and contract Human Resources Director,” because it is broad and/or misclassified (e.g., CFO is generally financial related in class 36, and Human Resources is generally in class 35).
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted. 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 application requirements specified in this Office action.
Applicant may adopt the following, if accurate:
Class 35: Outsource service provider in the field of human resources, payroll processing and administration of employee benefits other than insurance or finance plans; Outsource service provider in the field of human resources for contract Human Resources Director
Class 36 (new class): Outsource service provider in the field of accounting, bookkeeping and financial reporting; Outsource service provider in the field of finance for contract Chief Financial Officer
Multiple-Class Application Advisory. Please note, if applicant includes additional classes in response to this requirement, applicant must also comply with the multiple-class application requirements provided herein.
ID Manual. 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
(1) List the goods and/or 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(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees 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 class 35; and applicant needs a specimen for class 36. 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 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
/Jeane Yoo/
Examining Attorney
Law Office 120
(571) 272-5021
Jeane.Yoo@uspto.gov
RESPONSE GUIDANCE