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:  July 22, 2019

 

 

 

 

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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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:

• AMENDED IDENTIFICATION OF SERVICES REQUIRED
• MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

SEARCH RESULTS

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).

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The identification of services is indefinite and too broad and must be clarified because the references to “providing access” could include both providing Internet access and providing Internet content, and thus, could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03, 1402.11(a)(ii)-(iii). 

 

Providing multiple-user access to the Internet is a service provided by Internet Service Providers (“ISPs”) who supply the computer connection that enables computer users to access the Internet and all its data and content.  See TMEP §1402.11(a)(iii).  If applicant is an ISP, applicant must amend the identification to specify these services and to classify them in International Class 38.  See id.  The following format is suggested, if appropriate:  “Providing internet access,” in International Class 38.

 

If applicant is providing searchable online databases via the Internet, the subject matter of the information being provided determines classification of these services.  See TMEP §1402.01(a)(ii).  For example, “Providing an online searchable database featuring online business directories for use by customers to locate vendors,” “providing a searchable website featuring the goods and services of other vendors,” “providing an on-line searchable database featuring business information and business contacts about previously used vendors in the areas of quotes and fees,” and “providing an interactive website for users to select preferred vendors” would be classified in International Class 35, “providing an online searchable database featuring information about travel routes used for route planning” would be classified in International Class 39, and “providing an interactive website featuring technology that allows users to rate vendors” and “providing an interactive website featuring technology for vendors to generate reports” would be classified in International Class 42, because the content specified by applicant would be classified in these classes.  In addition, the identification should not include the word “access” because this word is suggestive of services in International Class 38, as described above.  See TMEP §1402.11(a)(ii)-(iii).

 

Applicant may adopt the following identification of services, if accurate: 

 

INTERNATIONAL CLASS 35:  Providing an online searchable database featuring online business directories for use by customers to locate vendors used by recreational vehicle owners and drivers in the field of towing, tire repairs, rest stops and parking, truck stops, truck washes, mobile fueling, vehicle repairs, waste dumping stations, recreational vehicle parks, campground locations, hotel and motel accommodations, propane stations, gas stations, lock smiths, and preventative maintenance checks; providing a searchable website featuring the goods and services of other vendors for use by recreational vehicle owners and drivers to locate vendors in the field of towing, tire repairs, rest stops and parking, truck stops, truck washes, mobile fueling, vehicle repairs, waste dumping stations, recreational vehicle parks, campground locations, hotel and motel accommodations, propane stations, gas stations, lock smiths, preventative maintenance checks; providing an on-line searchable database featuring business information and business contacts about previously used vendors in the areas of quotes and fees; providing an interactive website for users to select preferred vendors; promoting the goods and services of others through online advertisements

 

INTERNATIONAL CLASS 39:  Providing an online searchable database featuring information about travel routes used for route planning

 

INTERNATIONAL CLASS 42:  Providing an interactive website featuring technology that allows users to rate vendors; providing an interactive website featuring technology for vendors to generate reports with information on ratings, customer feedback comments, views and call information reports regarding calls from customers to vendors

 

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

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least three classes; however, applicant submitted fees sufficient for only two classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for classes 35, 39 and 42; applicant needs a specimen for any additional classes.  See more information about specimens.  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

DESIGNATION OF DOMESTIC REPRESENTATIVE SUGGESTED

Applicant is encouraged to designate a domestic representative upon whom notices or process may be served.  TMEP §610.  If applicant does not designate a domestic representative, any notice or process in proceedings affecting the mark may be served on the Director of the USPTO.  15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610.

 

Applicant may file a designation of domestic representative form online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. 

 

U.S. COUNSEL RULES CHANGES ADVISORY

On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

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. 

 

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

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

 

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 July 22, 2019 for

U.S. Trademark Application Serial No. 88487625

 

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. 

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

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 July 22, 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.”