Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  September 14, 2019

 

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 September 13, 2019, the examining attorney and Michelle Cooke 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 INDEFINITE

 

The identification of services is indefinite and must be clarified because terms are overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must indicate the specific nature of the services.  Applicant may adopt the following identification, if accurate:  

 

Entertainment services in the nature of {indicate specific event or act, and field, e.g. musical group, television comedy series, ethnic festival}; Entertainment services, namely, a continuing program series and feature programming for children; Entertainment services, namely, a continuing program series and feature programming in the fields of arts, music, entertainment, culture, history, sports, economics, health, travel, business, food, current events, and female accomplishments and empowerment; Entertainment services, namely, providing a website featuring general entertainment, art, and music, information, non-downloadable articles, non-downloadable essays, non-downloadable interviews, non-downloadable audio and/or video clips, and non-downloadable audio and video segments in the fields of the arts, music, sports, economics, health, travel, business, food, entertainment, culture, history, current events, and female accomplishments and empowerment; Non-downloadable video and/or audio recordings; Providing a website featuring non-downloadable articles, essays, interviews, books, games, activities, podcasts, webcasts, and multi-media content in the field of [indicate subject, e.g., women’s empowerment]; Production, creation, and distribution of audio and/or video content, multi-media content, quizzes, podcasts, motion pictures, television shows, program series, feature programming, live action shows, and theater and stage productions; non-downloadable online journals in the field of [indicate subject, e.g., women’s empowerment]; Online blogs featuring {indicate field or subject matter}; Conducting educational and entertainment conferences for non-business and non-commercial purposes; Entertainment and educational services, namely, providing training classes, workshops, seminars and panel discussions in the fields of arts, music, entertainment, culture, history, sports, economics, health, travel, business, entrepreneurship, leadership development, food, current events, female accomplishments and empowerment, and topics of general interest, and distribution of training materials in connection therewith; Arranging and conducting educational conferences, exhibitions, seminars, professional workshops and training courses all in the fields of [indicate subject] for non-business and non-commercial purposes; Organizing live exhibitions and conferences in the fields of arts, music, entertainment, culture, history, sports, economics, health, travel, business, entrepreneurship, leadership development, food, current events, female accomplishments and empowerment, and topics of general interest for non-business and non-commercial purposes; Educational and entertainment services, namely, providing motivational speaking services in the fields of arts, music, entertainment, culture, history, sports, economics, health, travel, business, entrepreneurship, leadership development, food, current events, female accomplishments and empowerment, and topics of general interest.  (Class 41)

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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.

 

DISCLAIMER OF DESCRIPTIVE WORDING

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “GIRLS” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The term GIRLS must be disclaimed as the services feature magazines, books, podcasts . . . . all about women and directed to girls.  Thus, the term GIRLS in the proposed mark describes a characteristic of the services and must be disclaimed.   See, http://www.rebelgirls.co/pages/podcast. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “GIRLS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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

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.  

 

 

 

/Caroline E. Wood/

Trademark Examining Attorney

Law Office 110

(571) 272-9243

 

 

 

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 September 14, 2019 for

U.S. Trademark Application Serial No. 88477023

 

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. 

 

 

/Caroline E. Wood/

Trademark Examining Attorney

Law Office 110

(571) 272-9243

 

 

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 14, 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.”