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:  March 18, 2020

 

 

This Office action is in response to applicant’s communication filed on 02/28/2020.  The applicant (1) amended the identification of services, (2) amended the mark description and (3) provided substitute specimens of use.  Only No. 2 is fully acceptable.  The substitute specimens for Class 35 raise a new issue as noted in the refusal below.  Other requirements are maintained and continued as noted.

 

Sections 1, 2, 3, and 45 Refusal – Failure to Function – Class 35

 

 

Registration is refused because the activities recited in the Class 35 identification of services, when viewed in conjunction with the specimen, are not registrable services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§904.07(b), 1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:

 

(1)       A service is a real activity, not an idea, concept, process, or system.

 

(2)       A service is performed primarily for the benefit of someone other than the applicant.

 

(3)       A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).

 

In this case, the description set forth in the identification of services is as follows: 

 

“Advertising, marketing and promoting the services of others who leverage computer network communication hubs for use in the workplace for transmission of internal communication, managing employee advocacy, social selling and employee engagement, and facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforce.”   

 

The specimen indicates that these activities are not registrable services because they do not show the applicant promotes or advertises any products made or services provided by third parties.  Instead, the specimens show how the applicant’s tool may be used by others in the workplace environment.  Promoting one’s own goods or services is not done for the benefit of others and is not consideration a “service” within the meaning of the Trademark Act.

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows proper service mark use for the services in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(2)       Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c).  This includes withdrawing an amendment to allege use, if one was filed.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

To amend the basis from Section 1(a) to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1). 

 

To withdraw an amendment to allege use, applicant must make a statement in the record requesting that the amendment to allege use be withdrawn. 

 

For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Requirement for Acceptable Specimen – Class 38 – Maintained and Continued

 

Class 38:

 

Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any services identified as “Digital network telecommunications services” specified in International Class 38.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

Specifically, there is no evidence in the record or in the specimens that the applicant provides the actual connections that are the electronic or digital means by which one telecommunication-enabled device communicates with another telecommunications-enabled device.  The specimens do not show the applicant provides wired, wireless or electronic connections to the internet or other communications networks.

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows proper service mark use for the services in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(2)       Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c).  This includes withdrawing an amendment to allege use, if one was filed.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

To amend the basis from Section 1(a) to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1). 

 

To withdraw an amendment to allege use, applicant must make a statement in the record requesting that the amendment to allege use be withdrawn. 

 

For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Note: the specimens of use are acceptable for “chat room services for social networking” in Class 38, and the services in Classes 42 and 45.

 

 

Requirement for Acceptable Identification – Class 35 – Maintained and Continued

 

The wording “leverage” in the identification of services is indefinite and must be clarified because it does not appear to describe advertising and marketing services performed for others.  The term “leverage” is defined as “use (something) to maximum advantage.”  Lexico, (2020) at www.lexico.com.  See attachment “leverage”.  The applicant states “…Applicant’s services enable companies to make use of social media and other communication hubs which they have not necessarily designed internally – to offer their employees a number of internal engagement-related services through the Applicant’s tool.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In essence, the proposed amendment is saying that the applicant promotes the services of others who use the applicant’s tool/services in connection within the workplace communication network.  The advertising and promotion service must be for the particular goods or services provided by third parties. For example, the applicant’s specimen of use indicates Coca-Cola® uses the applicant’s services. The applicant would need to show it promotes the products/services made/provided by Coca-Cola® to legitimately be providing the services of advertising, promotion and marketing. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 35:

 

Advertising, marketing and promoting the services of others who use computer network communication hubs in the workplace for transmission of internal communication, managing employee advocacy, social selling and employee engagement, and facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforce

 

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).

 

Note: the amended identification for Class 42 is acceptable.

 

 

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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@uspto.gov

 

 

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 March 18, 2020 for

U.S. Trademark Application Serial No. 88483905

 

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. 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 March 18, 2020, 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.”