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:  October 09, 2019

 

PRIOR OFFICE ACTION:  This Office action is supplemental to and supersedes the previous Office action issued earlier on October 9, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted attached certain evidence cited in the previous Office action.  See TMEP §§706, 711.02.  The trademark examining attorney apologizes for any inconvenience caused by the delay in presenting this evidence. 

 

Applicant must address all issues raised in this Office action, in addition to the issues raised in the earlier Office action dated October 9, 2019.  The issue raised in the previous October 9, 2019 Office action are as follow and are maintained:  (1) Section 1 & 4 Refusal – Mark Differs on Drawing and Specimen, (2) Disclaimer Required – “ADMISSIONS ESSAY”, (3) Amendment Required – Identification of Services, and (4) U.S. Licensed Counsel Required. 

 

SUMMARY OF ISSUES: Applicant must respond to all issues raised in this Office action and the previous October 9, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

• Section 1 & 45 Refusal – Mark Differs on Drawing an Specimen
• Disclaimer Required – “ADMISSIONS ESSAY”
• Amendment Required – Identification of Services
• U.S. Licensed Counsel Required

 

 

I.                SECTION 1 & 45 REFUSAL – MARK DIFFERS ON DRAWING AND SPECIMEN

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 41, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

The specimen displays the mark, alternatively, as MY ADMISSION ESSAY and MYADMISSIONSESSAY.  The drawing, however, displays the mark as MY ADMISSIONS ESSAY.  The mark on the specimen does not match the mark in the drawing because it either omits the last S in ADMISSIONS, or omits the spacing between the words MY ADMISSION ESSAY.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)   Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b).

 

(2)   Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

II.              DISCLAIMER REQUIRED – “ADMISSIONS ESSAY”

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).   A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

Applicant in this case must disclaim “ADMISSIONS ESSAY” because it is not inherently distinctive, and at best merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).

 

The attached evidence from the American Heritage dictionary shows that “admissions” is the plural form of the word “admission” meaning “the act of admitting or allowing to enter”, e.g. college admissions, and that an “essay” is “a short literary composition on a single subject, usually presenting the personal view of the author.”  Applicant’s services in International Class 41 are “education services, namely, providing on-line writing and rewriting of articles, essays, memos, case studies, dissertations, literature analysis and reviews for journals, publications, online platforms and study purposes other than for advertising or publicity, written text editing, proofreading of articles, essays, memos, case studies, dissertations, literature analysis and reviews in the field of academic writing assistance; Providing information about education; Providing information about online education”, which presumably includes all services of those types, including the writing of admissions essays.  The attached evidence from applicant’s website, MyAdmissionsEssay.com, shows further that applicant’s services include the writing of “college admissions essays.”  The wording ADMISSIONS ESSAY in the applied-for mark therefore merely describes applicant’s services.  Applicant has also voluntarily disclaimed the word ESSAY in the application, thereby conceding that ESSAY is not inherently distinctive when used in connection with its services. See TMEP §1213.01(d).

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

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

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

 

III.            AMENDMENT REQUIRED – IDENTIFICATION OF SERVICES

 

Applicant must amend the identification of services in International Class 41 for the reasons stated below.

 

Indefinite Wording in Identification

 

The wording “Educational services, namely, providing on-line writing and rewriting of articles, essays, memos, case studies, dissertations, literature analysis and reviews for journals, publications, online platforms and study purposes other than for advertising or publicity, written text editing, proofreading of articles, essays, memos, case studies, dissertations, literature analysis and reviews in the field of academic writing assistance” in the identification of services is indefinite and must be clarified because it is unclear that the all of the specified services are “educational”, and because the recipients, e.g. “journals”, and fields, e.g. “academic writing assistance” of the named services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “proofreading of articles, essays, memos, case studies, dissertations, literature analysis and reviews in the field of academic writing assistance” in the identification of services is indefinite and must be clarified because the nature of the “reviews” is unclear, and because it is unclear if all of the specified services are “in the field of academic writing assistance”, or just “proofreading of....reviews.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Suggested Wording for Identification

 

Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):

 

“Educational services, namely, providing on-line writing and rewriting of academic articles, essays, memos, case studies, dissertations, literature analysis analyses, and literature reviews , all for journals, publications, online platforms and the purpose of academic study purposes other than for advertising or publicity,; Providing on-line writing and rewriting of articles, essays, memos, case studies, dissertations, literature analyses, and literature reviews for journals and periodicals other than for advertising or publicity; Written text editing;, Proofreading of manuscripts in the nature of articles, essays, memos, case studies, dissertations, literature analysis analyses, and literature reviews, all in the field of academic writing assistance; Providing information about education; Providing information about online education ” in International Class 41.

 

Advisories – ID Manual and Scope of Amendments

 

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.

 

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).

 

 

IV.            U.S. LICENSED COUNSEL REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

• 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.

 

Click HERE to file a response to this non-final Office action

 

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. 

 

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.  

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 09, 2019 for

U.S. Trademark Application Serial No. 88520796

 

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. 

 

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@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 October 09, 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.”