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 29, 2019

 

SUMMARY OF ISSUES:

 

• Merits of Application Deferred -  Search of Database of Class 009 Only
• Prior Pending Application  -  Class 009
• Clarification of the Identification of Goods and Services

 

MERITS OF APPLICATION DEFERRED – SEARCH CONDUCTED FOR CLASS 009 ONLY

 

A review of the merits of the application is deferred, and a search of the USPTO’s database of registered and pending marks is deferred in part, until applicant responds to this Office action by satisfying one of the following:

 

(1)        Specify the number of classes for which registration is sought and provide the filing fees for all such classes.

 

(2)        Delete class(es) from the application not covered by the fee(s) already submitted. 

 

See TMEP §§810.01, 1401.04. 

 

The application was filed online as a Trademark Electronic Application System (TEAS) Reduced Fee (RF) application and therefore the filing fee per class was $275.  See 37 C.F.R. §2.6(a)(1)(i)-(iii); TMEP §810.  The application identifies goods and/or services in at least 7 classes, which require a total of fees in the amount of $1925.  Applicant submitted $275 with the application.  The fee(s) submitted was sufficient for only 1 class. 

 

SEARCH RESULTS – CLASS 009 ONLY (the first entries in the identification of goods and services)

 

Note:  A search of the register was conducted for Class 009 only as these goods were the first entries in the list of goods and services.  The other classes are deferred pending response of the applicant and submission of additional filing fees or deletion of classes. 

 

Prior Pending Application

 

The filing date of pending U.S. Application Serial No. 88308222 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.

 

Classification of Goods and Services

 

Applicant has classified all the goods and services in International Class 035.  However, the proper classification for each item is reflected below. 

 

Additionally, applicant has provided the application fee for only 1 international class(es).  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

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.

 

Clarification of the Identification of Goods and Services

 

Some of the wording in the identification of goods and services is indefinite and must be clarified because the specific nature of the goods and services is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, software must be clarified to indicate if it is downloadable and/or recorded for proper classification in Class 009.

 

The following is suggested:

 

Class 009 [if adopted by applicant]

 

• Downloadable and/or recorded computer e-commerce software to allow users to perform electronic business transactions via a global computer network; downloadable and/or recorded software for mobile devices for use in e-commerce and the retail industry to allow users to perform business management via a global computer network, namely, database management, sales, product, pricing and customer tracking and reporting, and inventory management; downloadable and/or recorded software for mobile devices for use in e-commerce and the retail industry, namely, software for point of sale transactions

 

Class 016 [if adopted by applicant]

 

Address labels; Adhesive labels; Adhesive plastic film for wrapping and packaging; Bar code labels; Boxes, cartons, storage containers, and packaging containers made of paper or cardboard; Label paper; Mailing labels; Packaging boxes of cardboard; Packaging boxes of paper; Padded paper envelopes for mailing or packaging; Paper pouches for packaging; Plastic bags for packaging; Plastic sheets, films and bags for wrapping and packaging; Cardboard packaging boxes in collapsible form; Packaging materials made of recycled paper; Plastic bubble packs for wrapping or packaging

 

Class 035 [if adopted by applicant]

 

• Order fulfillment services; customer services, namely, responding to customers' inquiries for others in the field of shipping and order fulfillment; inventory management; business administration services for processing sales made on the internet; providing a website featuring an online marketplace for sellers and buyers of goods and/or services; providing merchant buy lists, namely {SPECIFY, E.G., a list of items and services available for purchase} to clients; mail receiving; commercial mail receiving agency, namely, providing specialized mail management services; business management services, namely, managing logistics, reverse logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product distribution processes for others; business management and marketing consulting; business management services for online stores; business management services relating to business information and data compiling and analyzing; business marketing consulting; online retail store services featuring a wide variety of consumer goods of others; online wholesale and retail store services featuring {SPECIFY, E.,G clothing, furniture, etc.}; online retail consignment stores featuring {INDICATE SPECIIFC FIELD, E.G, clothing}; online consignment services whereby goods are received on consignment in online retail stores featuring {INDICATE SPECIFIC FIELD, E.G., clothing}; electronic commerce services, namely, providing information about products via online networks for advertising and sales purposes

 

Class 036 [if adopted by applicant]

 

·         Merchant services, namely, payment transaction processing services; providing electronic processing of credit card transactions and electronic payments via a global computer network; electronic commerce payment services, namely, establishing funded accounts used to purchase goods and services on the Internet;

 

Class 039 [if adopted by applicant]

 

·         Parcel shipping services; packaging goods for shipment; delivery services, namely, shipping and delivery of general consumer goods; packaging of articles for transport; expedited shipping services, namely, freight transportation by means of truck, train or air; warehouse storage; freight shipping; drop shipment processing being {SPECIFY, E.G., shipping of goods}; providing local product pickup and return services, namely {SPECIFY, E.,G shipping and delivery services, namely, pickup and return of packages by various modes of transportation}

 

Class 040 [if adopted by applicant]

 

·         Assembly of products for others

 

Class 042 [if adopted by applicant]

 

·         Application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants; providing temporary use of on-line non-downloadable software for processing electronic payments; Providing a web-based service featuring technology that enables users to create hosted e-commerce stores to sell their goods and services online; providing an online platform featuring computer software platforms that enables users to create a unique URL for an online store and the ability for users to manage the content and inventory of their online store; design, creation, hosting and maintenance of internet sites for third parties; software as a Service (SAAS) featuring software for use in e-commerce and the retail industry to allow users to perform electronic business transactions via a global co providing local product pickup services mputer network; software as a Service (SAAS) services featuring software for use in database management, sales and customer tracking and management, and inventory management for the retail industry; providing an online platform featuring temporary use of online non-downloadable computer software for use in the retail and e-commerce industry for facilitating retail store services; designing, creating, maintaining and hosting online retail and electronic commerce websites for others

 

NOTE:   the entry “product pickup services and mailboxes” is not acceptable as the wording is indefinite.  “Pickup” services references services in Class 039 (see suggestion above); however, “mailboxes” is too vague to ascertain the services applicant is referring to.   Applicant may consider clarifying this entry to “rental of mailboxes” in Class 039.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

ADVISORY:  MULTI-CLASS APPLICATION AND ADDITIONAL FEES

 

The application identifies goods and/or 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 goods and/or services that are classified in at least 8 classes; however, applicant submitted a fee(s) 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 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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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  

 

 

/CarynGlasser/

Caryn Glasser

Trademark Examining Attorney

Law Office 105

Phone:  (571) 270-1517

Fax:  (571) 270-2517

caryn.glasser@uspt

 

 

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 29, 2019 for

U.S. Trademark Application Serial No. 88452461

 

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. 

 

 

/CarynGlasser/

Caryn Glasser

Trademark Examining Attorney

Law Office 105

Phone:  (571) 270-1517

Fax:  (571) 270-2517

caryn.glasser@uspt

 

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 29, 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.”