To: | THE UNIVERSITY OF CHICAGO (chiipdocket@michaelbest.com) |
Subject: | U.S. Trademark Application Serial No. 88444472 - 6TO16 - 092318-9045 |
Sent: | January 30, 2020 03:54:11 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88444472
Mark: 6TO16
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Correspondence Address:
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Applicant: THE UNIVERSITY OF CHICAGO
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Reference/Docket No. 092318-9045
Correspondence Email Address: |
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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: January 30, 2020
This Office action is in response to applicant’s communication filed on 01/28/2020.
The examining attorney has been informed that the wording in bold in the amended identification is still not acceptable. The examining attorney apologizes for not
specifying this in the last office action.
In the most recent response, the applicant amended to:
IC 041: Educational services, namely, developing curricula for students to prepare for college and high school; providing a website designed to encourage and teach goal setting and decision making to students interested in attending college; Educational services, namely, providing students with in-person and online instruction relating to the application process for colleges and other selective educational institutions and distribution of instructional materials in connection therewith; educational services, namely, providing temporary use of online non-downloadable interactive games and online non-downloadable role playing activities based on college and high school curriculums, designed as college preparation
The wording “providing a website designed to encourage and teach goal setting and decision making to students interested in attending college;” in the identification of services is indefinite and must be clarified because the exact nature of the services provided through the website are not specified and the services could encompass services in more than one class. For example, the services could involve services for personal development purposes, which is in Class 45, which would be in a different class than class 45. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The applicant must list the exact nature of the services, subject matter of the services, and purpose of the services, and list them in the correct class. To be in Class 41, the subject matter and purpose of the services must be that which is clearly classified in Class 41.
SUGGESTED IDENTIFICATION OF SERVICES
Applicant may amend the identification of services to the following wording, if accurate:
IC 041: IC 041: Educational services, namely, developing curricula for students to prepare for college and high school; providing a website featuring information in the field of college admissions, specifically, college selection, completing admissions applications, and preparation for college admission interviews, with an emphasis on goal setting and decision making for purposes of assisting with college application and admission; Educational services, namely, providing students with in-person and online instruction relating to the application process for colleges and other selective educational institutions and distribution of instructional materials in connection therewith; educational services, namely, providing temporary use of online non-downloadable interactive games and online non-downloadable role playing activities based on college and high school curriculums, designed as college preparation
IC 045: Providing information in the field of personal development, namely, improving oneself through goal setting and decision making, for students interested in attending college
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.
The application references goods and/or 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 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 may be classified in at least two 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 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 41 only. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
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.
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.
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@uspto.gov
RESPONSE GUIDANCE