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:  September 02, 2019

 

 

Database Search: 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).

 

Application Has Been Reviewed: The referenced application has been reviewed by the assigned trademark examining attorney.  To avoid abandonment, the applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues Applicant Must Address

• Unacceptable Drawing Quality
• Identification and Classification of Services

 

Unacceptable Drawing Quality

The drawing of the mark is not acceptable because it will not create a high quality image when reproduced.  See TMEP §807.04(a).  The drawing contains image noise, black pixels in white areas and white pixels in black areas.  The image of the mark is blurred.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.

 

For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.

 

Identification and Classification of Services

The identification of services is unacceptable because the terms “educational services, namely, online non-downloadable webinars and presentations” (Class 41) and “marketing campaign creation and management; email marketing” (Class 42) are indefinite.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

For “educational services, namely, online non-downloadable webinars and presentations,” the applicant must indicate the subject matter of the webinars and presentations, e.g., financial investments, ethics, foreign language.

 

“Marketing campaign creation and management” and “email marketing” are services classified in Class 35.  However, it appears that “marketing campaign creation and management” and “email marketing” may be the subject matter of the SaaS software.  If so, the applicant should replace the semicolons after “sales” and “management” with commas.  The applicant should note that generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.”  TMEP §1402.01(a).  Semicolons generally should be used to separate a series of distinct categories of goods or services within a class of goods and services.  Id.

 

The Class 9 identification of goods and the Class 35 identification of services are acceptable.  To resolve this issue, the applicant may adopt the following identification and classification, if accurate (added wording given in bold): 

 

• Downloadable computer software, namely, mobile applications for use in event check-in, verification of ticket validity, printing badges, sharing data, voice and text communications, and providing users with maps, location information and directions (Class 9)

 

• Business to business direct marketing services; providing advertising, online advertising, business management, and business development services; marketing services; marketing automation services; marketing consulting and advisory services for marketing and sales metrics; marketing consulting and advisory services for marketing automation technology configuration; special event planning for commercial, promotional, or advertising purposes; management of event ticketing for others; marketing campaign creation and management; email marketing (Class 35)

 

• Arranging and conducting educational conferences in the fields of marketing, marketing automation, business development, email marketing, and search engine optimization; providing educational services, namely, online non-downloadable webinars and presentations in the field of [indicate specific field, e.g., financial investments, ethics, foreign language]; providing a website featuring blogs and podcasts of non-downloadable publications in the nature of articles and videos in the field of business and marketing; ticket reservation and booking services for entertainment, educational, and cultural events (Class 41)

 

• Platform-as-a-service (PaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales; software-as-a-service (SaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales, marketing campaign creation and management, and email marketing; software-as-a-service (SaaS) services featuring software for email marketing; providing technical integration services, namely, integrating marketing automation software platforms with webinar presentation management systems and sales force automation (SFA); providing temporary use of non-downloadable web-based software application to create, access, and manage custom digital content about conferences (Class 42)

 

The applicant’s goods and 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.  The applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, the 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.

 

Information for TEAS Applicants

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  

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

(571) 272-9140

leigh.case@uspto.gov (preferred)

 

 

 

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 September 02, 2019 for

U.S. Trademark Application Serial No. 88466145

 

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. 

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

(571) 272-9140

leigh.case@uspto.gov (preferred)

 

 

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 September 02, 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.”