United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 23, 2019

 

 

PRIORITY ACTION

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On August 23, 2019, the examining attorney and Rexford Brabson discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

IDENTIFICATION OF SERVICES

 

The wording “education services,” “training services,” “entertainment services,” “physical fitness tuition,” “physical health education,” “physical training services,” “children’s education and entertainment services,” and “lifestyle counselling and consultancy (training)” in the identification of services is indefinite and must be clarified because the exact nature of the services is unknown.  Applicant must specify the format and subject area for the education services, e.g., classes and workshops in the field of physical fitness; applicant must indicate the subject area for the training services, e.g., sports and physical fitness; applicant must indicate the entertainment services by type, e.g., arranging fitness competitions, dance performances, etc.  The wording physical fitness tuition is indefinite as “tuition” likely has a different meaning in British English than in the U.S.  The examining attorney suggested replacing with “physical fitness training services and classes in the field of physical fitness,” if accurate or simply deleting as the wording is likely covered by the rest of the identification.  The wording physical health education requires clarification as to the format of the education, e.g., classes, seminars, etc.  The wording physical training services needs to say physical fitness training services.  The wording children’s education and entertainment services requires clarification, similar to the first clause, e.g., children’s classes and workshops in the field of physical fitness and children’s entertainment in the nature of fitness competitions, dance performances, etc.  Lastly, the wording lifestyle counselling and consultancy (training) is indefinite and potentially misclassified as lifestyle wellness counseling is in Class 044.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification 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.

 

Applicant may adopt the following amended identification, if accurate:

 

·       Education services, namely, classes, seminars and workshops in the field of physical fitness; training in the field of physical fitness; entertainment services, namely, {SPECIFY by type, e.g., arranging fitness competitions, dance performances, etc.}; instruction in physical fitness; operation of physical fitness centres; physical education services; physical education instruction; physical fitness training services; physical health education, namely, providing classes, seminars and workshops in the field of physical fitness; physical fitness training services; fitness and exercise clinics, clubs and salons; health club services relating to fitness and exercise; instruction in physical fitness; conducting exercise classes; provision of apparatus for exercise; provision of exercise facilities; sports, gymnastic and dance instruction; children's education and entertainment services, namely, providing classes, seminars and workshops in the field of physical fitness and {SPECIFY entertainment, e.g., arranging fitness competitions, dance performances, etc.}; consultancy or advisory services in relation to any of the aforementioned services; providing information, including but not limited to online, about any of the aforementioned services  [INT. CLASS 041]

 

·       Lifestyle wellness counseling and consultancy; and providing information, including but not limited to online, about the aforementioned services  [properly in INT. CLASS 044]

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or 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.

 

CLASSIFICATION OF SERVICES

 

If applicant adopts the suggested amendment of the identification of services, then applicant must amend the classification to add International Class 044 as shown above.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one 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 fees 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.

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

AMENDED MARK DESCRIPTION

 

The following description of the mark replaces the current description of record:

 

            The mark consists of a multicolored circle in the colors red, blue, yellow and green with corresponding colored dots on each quadrant to symbolize four children holding hands in a circle, with the words “READYSTEADYGOKIDS” underneath the design.  “READY” is in red, “STEADY” is in yellow, “GO” is in green and “KIDS” is in blue.

 

See 37 C.F.R. §§2.37, 2.72; TMEP §§808 et seq.

 

TEAS REDUCED FEE CORRESPONDENCE REQUIREMENTS

 

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.  

 

ATTORNEY INFORMATION & ATTESTATION REQUIRED

 

Attorney bar information required.  To respond to this Office action, applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 041 will be deleted from the application: “education, training and entertainment services,” “physical fitness tuition,” “physical health education,” “physical training services,” “children’s education and entertainment services,” “lifestyle counselling and consultancy (training).”  The application will then proceed with the following services in International Class 041 only: “instruction in physical fitness,” “operation of physical fitness centres,” “physical education services,” “physical education instruction,” “physical fitness training services,” “fitness and exercise clinics, clubs and salons,” “health club services relating to fitness and exercise,” “instruction in physical fitness,” “conducting exercise classes,” “provision of apparatus for exercise,” “provision of exercise facilities,” “sports, gymnastic and dance instruction,” “consultancy or advisory services in relation to any of the aforementioned services,” “providing information, including but not limited to online, about any of the aforementioned services.”  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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 refusal(s) and/or requirement(s) 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. 

 

Note: An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

How to respond.  Click to file a response to this nonfinal Office action.

 

 

/Toby E. Bulloff/

Examining Attorney

Law Office 119

(571) 270-1531

toby.bulloff@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 23, 2019 for

U.S. Trademark Application Serial No. 88451210

 

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. 

 

 

/Toby E. Bulloff/

Examining Attorney

Law Office 119

(571) 270-1531

toby.bulloff@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 23, 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.”