Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

NON-FINAL 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 24, 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.  

 

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 24, 2019, the examining attorney and Elise Tenen-Aoki 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 GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified as specified below in bold type.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

“[specify “recorded” or “downloadable”] computer software for use in [specify the function of the software]; computer hardware; CD Roms, VCDs, DVDs, cinematographic films, videotapes and video disks recorded with religious and spiritual music, visual recordings and audio visual recordings featuring music in the field of religion, spirituality, self improvement; computer programs, disks and tapes, electronic publications, namely, [indicate specific type of publication, e.g., book, magazine, manual] featuring [indicate subject matter] recorded on computer media; encoded [specify, e.g., “key,” “identity,” etc.] cards; blank compact discs, audio and video discs, floppy computer discs and video tapes and cassettes; replacement parts for all aforesaid goods,” in International Class 9.

 

“Religious books; religious circular letters; printed matter, namely, [specify, e.g., “certificates,” “menus,” “paper signs,” etc.]; brochures, printed reports and catalogues, all featuring [specify subject matter]; paper; cardboard; news bulletins; photographs; office requisites, namely, [specify, e.g., “staplers,” “rubber bands,” etc.]; stationery,” in International Class 16.

 

“Religious instruction services; educational and entertainment services, namely, providing motivational and educational speakers in the field of self and personal improvement; providing training in the field of [indicate field or subject matter]; arranging and conducting educational conferences; arranging of exhibitions, seminars and conferences for cultural or educational purposes; entertainment in the nature of ongoing television programs in the field of [indicate specific field, e.g., news, comedy, variety]; production of television programs and shows; film production; recording studio services; presentation of live [specify nature of performance, e.g., dance, musical, magic] performances; dubbing services,” in International Class 41.

 

“Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals; providing spiritual rehabilitation services; conducting religious prayer services; evangelistic and ministerial services; ministerial services, namely, holding spiritual retreats to assist religious leaders, both clergy and lay, to develop and enhance their spiritual lives; charitable outreach services, namely, providing counseling services in the field of religion to the needy, the imprisoned, and the sick; providing on-line information in the field of spirituality, self-help, and personal empowerment subject matters,” in International Class 45.

 

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.

 

DISCLAIMER

 

Applicant must disclaim the descriptive wording SPIRITUAL apart from the mark as shown because it merely describes a feature or characteristic of applicant’s goods and services.  See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a).  The examining attorney notes that the Class 9 goods are in the fields of “spiritual music” and “spirituality” and that the Class 45 services include “spiritual services” and “spiritual retreats.”

 

Applicant may submit the following standardized format for a disclaimer:

 

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

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

FOREIGN REGISTRATION NOT FROM COUNTRY OF ORIGIN

 

Registration is refused under Trademark Act Section 44(e) because the foreign registration is not from applicant’s country of origin.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01.  Specifically, applicant has submitted a foreign registration from Australia to support applicant’s Section 44(e) basis; however, the application shows that applicant is domiciled, incorporated, or organized in the United Kingdom.

 

To obtain registration under Section 44(e), an applicant must be the owner of a valid registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01.  Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national.  15 U.S.C. §1126(c); TMEP §1002.04.

 

Because applicant is domiciled, incorporated, or organized in a country different from the country that issued the foreign registration, applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin.  See 15 U.S.C. §1126(c); TMEP §1002.04. 

 

Thus, to overcome this refusal, applicant may provide the following written statement for the record:  “Applicant has had a bona fide and effective industrial or commercial establishment in Australia as of the date of issuance of the foreign registration.”  TMEP §1002.04.  If applicant cannot assert that such country is a country of origin, applicant may delete the Section 44(e) basis and substitute Section 1(a) or 1(b), if applicant can satisfy all the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §§806.03, 1002.01.

 

QUESTIONS

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

john.gartner@uspto.gov (informal correspondence)

 

 

 

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 24, 2019 for

U.S. Trademark Application Serial No. 88499569

 

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. 

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

john.gartner@uspto.gov (informal correspondence)

 

 

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 24, 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.”