Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:

• Identification of Goods and Services – Clarification Required

 

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

 

Except as noted below, applicant’s amendments to the identification of goods and services in the November 25, 2019 response are acceptable. Therefore, this partial requirement applies only to the services specified therein.

 

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”. 

 

Moreover, as noted in the prior Office action, particular wording in the U.S. application’s identification of goods and/or services is not acceptable because it exceeds the scope of the goods and/or services in the foreign registration.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Trademark Act Section 44, an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). 

 

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:

 

The wording “providing others with access electronically stored data and computer software at a remote station” in the identification of services is indefinite and must be clarified to further specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 42:

 

The wording “scientific and technological, namely, research and design services related to telecommunication and navigation signals” in the identification of services is indefinite and must be clarified to further clarify the nature of the services in the prefatory language.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The following is an example of wording the applicant may substitute for the entries noted above, if accurate (changes in bold and strikethrough):

 

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.

 

SCOPE ADVISORY: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

RESPONDING TO THIS FINAL OFFICE ACTION

 

If applicant does not timely respond within six months of the issue date of this final Office action, the services to which the final requirement apply will be deleted from the application by Examiner’s Amendment: 

 

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

• 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 December 13, 2019 for

U.S. Trademark Application Serial No. 88507951

 

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. 

 

 

/Luz M. Adorno Santos/

Trademark Examining Attorney

U.S. Patent & Trademark Office, Law Office 111

571-272-4902

Luz.AdornoSantos@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 December 13, 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.”