To: | Agency Within (maulin.shah@envisionip.com) |
Subject: | U.S. Trademark Application Serial No. 88521275 - WITHIN - N/A |
Sent: | October 10, 2019 02:46:31 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88521275
Mark: WITHIN
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Correspondence Address: |
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Applicant: Agency Within
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 10, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues
· Identification of Services Requires Amendment
Search of Office Records
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).
Identification of Services Requires Amendment
Applicant submitted the following identification of services with the application:
International Class 41
Consulting services in the field of electronic commerce
The above bolded wording in the identification of services requires amendment because it does not identify the services with enough specificity to make clear the scope of the services offered by applicant. Further, the wording could identify services in more than one international class and is thus overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Therefore, the identification of services as submitted with the application requires the following amendments.
International Class 41
The wording “consulting services in the field of electronic commerce” is indefinite because the specific nature of the services provided is unclear. Additionally, the wording could be used to describe services in multiple international classes and is thus overbroad. For example “financial consultation in the field of electronic commerce” is classified in International Class 36 while “business consulting services in the field of electronic commerce” would be in International Class 35.
Applicant may adopt the following identification of services, if accurate:
International Class 35
Business consulting services in the field of electronic commerce
International Class 36
Financial consulting services in the field of electronic commerce
International Class 41
Business training consultancy services in the field of electronic commerce
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 services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Comments
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.
How to respond. Click to file a response to this nonfinal Office action
/Faucette, Max/
Trademark Examining Attorney
Law Office 107
(571)270-5655
RESPONSE GUIDANCE