Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  January 07, 2020

 

This Suspension notice is in response to applicant’s December 16, 2019 communication.

 

In a June 23, 2019 Office action the applied-for mark was denied registration. The trademark examining attorney issued a Section 2(d) Refusal and required applicant to amend the identification of services. Applicant was also alerted to a Potential Section 2(d) Refusal regarding the marks in five prior-pending applications.

 

In applicant’s response, applicant provided arguments against the 2(d) refusal. In light of these arguments, and after further consideration and review, the refusal is withdrawn. Applicant amended the identification of services as well. At present, some, but not all, of the entries in the identification of services are definite. Thus, the requirement for a definite identification is maintained and continued. Specifics are set forth below. Further, there is still a Potential Section 2(d) Refusal regarding three prior-pending applications. This is explained below.

,

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

USPTO database searched; prior-filed potentially conflicting pending application(s) found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark(s) in a prior-filed pending application(s) may bar registration of applicant’s mark.

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial Nos. 88420786, 88420754 and 86951712

 

Refusal resolved and maintained and continued.  The following refusal is withdrawn

 

            •Section 2(d) Likelihood of Confusion Refusal re: Registration No. 2930151

 

See TMEP §713.02.

 

The following requirement is maintained and continued: 

 

·        Particular Wording in the Identification of Services is Indefinite and Misclassified

 

First, particular services are classified incorrectly.  Applicant must amend the application to classify the services in the correct International Class.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Specifically, in the previous Office action, applicant was instructed to name the Class 41 leisure activities featured on applicant’s websites. Applicant’s response stated that “cooking” is one of these activities. Information regarding cooking belongs in Class 43, not Class 41. Further information regarding spirituality belongs in Class 45, not Class 44. Applicant must clarify what type of spirituality information they provide.

 

Some of the wording 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 common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id. Specifically, applicant must clarify what category “emotional health”, e.g. mental health.

 

Applicant may substitute the following wording, if accurate: 

 

Class 41: Providing on-line newsletters in the fields of health and wellness, foods, herbs, psychology, health, wellness, fitness, leisure, nutrition, dieting, medical topics, health care, aromatherapy, homeopathy, nutritional supplements; entertainment in the nature of on-going television and radio programs in the fields of health and wellness, foods, herbs, psychology, health, wellness, fitness, leisure, nutrition, dieting, medical topics, health care, aromatherapy, homeopathy, nutritional supplements; providing on-line websites featuring information in the fields of fitness and leisure activities, namely, physical exercise and physical fitness

 

Class 43: providing on-line websites featuring information in the fields of fitness and leisure activities, namely, cooking

 

Class 44: Providing on-line web sites featuring information in the fields of physical health and wellness and mental health and wellness, including emotional health and wellness, namely, in the fields of psychology, health, wellness, nutrition, dieting, medical topics, health care, aromatherapy, homeopathy, and nutritional supplements

Class 45: Providing on-line web sites featuring information in the field of spirituality, namely, in the field of spiritual health and wellness in the fields of {specify which of applicant’s named fields apply here, e.g. wellness}

 

·        Multiple Class Advisory

 

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 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 fees 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 four classes; however, applicant submitted fees sufficient for only two classes.  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 actually acceptable for all suggested international classes, so additional specimens are not needed.  See more information about specimens.

 

 

            (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.

 

See id.  This requirement will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

(571) 270-5984

Amanda.Rosen@USPTO.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 07, 2020 for

U.S. Trademark Application Serial No. 88444595

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

(571) 270-5984

Amanda.Rosen@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).

 

 

 

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.”