To: | Alibaba Group Holding Limited (nptm@nixonpeabody.com) |
Subject: | U.S. Trademark Application Serial No. 88507951 - A - 074619-223 |
Sent: | December 13, 2019 05:46:10 PM |
Sent As: | ecom111@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88507951
Mark: A
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Correspondence Address:
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Applicant: Alibaba Group Holding Limited
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Reference/Docket No. 074619-223
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: December 13, 2019
This Office action is in response to applicant’s communication filed on November 25, 2019.
In a previous Office action dated August 8, 2019, applicant was required to satisfy the following requirement: amend the identification of goods and services.
Based on applicant’s response, certain entries in the identification of goods and services remain indefinite. Accordingly, this requirement is now made FINAL. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Telephone response encouraged. Applicant is encouraged to call or email the assigned attorney below to resolve the issues in this Office action by examiner’s amendment.
IDENTIFICATION OF GOODS AND SERVICES – CLARIFICATION REQUIRED
International Class 35:
The wording “retail and wholesale store services in the field of…paper and cardboard products, namely, computer paper, cardboard boxes, paper office paper stationery…”
is unclear as to the nature of “paper office paper stationary”.
In this case, the U.S. application identifies the services as follows: “auctioneering” and “data processing services”. However, the foreign registration identifies these services as “auctioneering provided on the Internet” and “computer data processing”. These particular services in the U.S. application exceed the scope of services in the foreign registration because the wording is broader.
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of services in the U.S. application to correspond to the services in the foreign registration, ensuring that all services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Section 44 basis for the services beyond the scope of the foreign registration and relying solely on the Section 1 basis for the remaining services.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).
Note that amending “auctioneering” to correspond to “auctioneering provided on the Internet” in the foreign registration will result in a duplicate. Applicant is advised that the USPTO will remove duplicate entries from the identification prior to registration.
Additionally, applicant may respond by arguing that these services are within the scope of the foreign registration and should remain in the U.S. application.
International Class 38:
International Class 42:
International Class 35:
paper office paper stationary
computer data processing services
International Class 38:
providing others with access to electronically stored data and computer software at a remote station
International Class 42:
scientific and technological services, namely, research and design services related to telecommunication and navigation signals
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.
RESPONDING TO THIS FINAL OFFICE ACTION
International Class 35;
“paper office paper stationary”, “auctioneering”, and “data processing services”
International Class 38:
“providing others with access electronically stored data and computer software at a remote station”
International Class 42:
“scientific and technological, namely, research and design services related to telecommunication and navigation signals”
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
In such case, the application will proceed with the remaining goods and services only.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Luz M. Adorno Santos/
Trademark Examining Attorney
U.S. Patent & Trademark Office, Law Office 111
571-272-4902
Luz.AdornoSantos@uspto.gov
RESPONSE GUIDANCE