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 16, 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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Applicant’s Domicile Street Address Required
• Translation Statement Required
• Amended Identification of Services Required
• Multiple-Class Application Requirements

 

SEARCH RESULTS

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).

 

APPLICANT’S DOMICILE STREET ADDRESS REQUIRED

All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; 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.  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 a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as a juristic entity and specifies applicant’s domicile as “c/o” or in “care of” another party’s address.  In most cases, an address that is listed as “c/o” or in “care of” another party’s address is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, applicant must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile.  Examination Guide 4-19, at I.A.3.

 

TRANSLATION STATEMENT REQUIRED

To permit proper examination of the application, applicant must submit an English translation of the foreign word “MISHKA” in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “MISHKA” in the mark is “BEAR”.  TMEP §809.03.  See attached translation evidence.

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Applicant must clarify the wording “entertainment services, namely, providing  . . . videos”;  “entertainment services; educational services”; “providing websites featuring information in the fields of shopping,  . . . wellness,  . . . fashion, lifestyle, health, beauty, relationships, travel,  . . . and interior decoration”; “web series”; “streaming series provided via any platform”; and “entertainment and educational services” in the identification of services in International Class 41 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The wording “entertainment services,” “educational services,” and “entertainment and educational services” is indefinite because it does not specify the nature of the entertainment and educational services.  Further, this wording could identify goods and/or services in more than one international class.  For example, “providing videos” could encompass downloadable videos in class 9 and providing non-downloadable videos in class 41, and “providing websites featuring information in the fields of shopping,  . . . wellness,  . . . fashion, lifestyle, health, beauty, relationships, travel,  . . . and interior decoration” identifies services in more than one international class because for “providing a website featuring information” services, the subject matter of the website determines classification.  For example, consumer information in the field of shopping is in class 35, information in the field of travel is in class 39, information in the field of interior decorating is in class 42, information in the fields of wellness, healthy lifestyles, health, and beauty is in class 44, and information in the fields of fashion, personal relationships, and religious, nomadic, gay, lesbian, bi-sexual and transgender lifestyles is in class 45.  Finally, “streaming” is a class 38 communications service.

 

Applicant may substitute the following wording, if accurate: 

 

INTERNATIONAL CLASS 9:  downloadable videos featuring stories, news, information, interviews, and commentary in the fields of shopping, entertainment, wellness, fitness, fashion, lifestyle, health, beauty, relationships, travel, music, and interior decoration

 

INTERNATIONAL CLASS 35:  providing a website featuring consumer information in the field of shopping

 

INTERNATIONAL CLASS 38:  streaming of _____ (specify format, e.g., audio, video, and audiovisual) series provided via any platform

 

INTERNATIONAL CLASS 39:  providing a website featuring information in the field of travel

 

INTERNATIONAL CLASS 41:  entertainment services, namely, providing podcasts, webcasts and non-downloadable videos featuring stories, news, information, interviews, and commentary in the fields of shopping, entertainment, wellness, fitness, fashion, lifestyle, health, beauty, relationships, travel, music, and interior decoration; non-downloadable electronic publications in the nature of e-books featuring stories, news, information, interviews, and commentary in the fields of shopping, entertainment, wellness, fitness, fashion, lifestyle, health, beauty, relationships, travel, music, and interior decoration; non-downloadable electronic publications in the nature of journals, newsletters, articles and blog posts featuring stories, news, information, interviews, and commentary in the fields of shopping, entertainment, wellness, fitness, fashion, lifestyle, health, beauty, relationships, travel, music, and interior decoration; online journals, namely, a group of blogs featuring information, advice, comments and tips about shopping, entertainment, wellness, fitness, fashion, lifestyle, health, beauty, relationships, travel, music, and interior decoration; entertainment services, namely, _____ (specify, e.g., live performances by a musical group); educational services, namely, _____ (specify, e.g., providing non-downloadable webinars in the field of skincare); providing websites featuring information in the fields of entertainment, fitness, and music; entertainment services in the nature of development, creation, production, distribution, and post-production of TV pilots, TV episodes and web entertainment program series; entertainment services, namely, web multimedia program series featuring _____ (specify, e.g., comedy, action and adventure) provided via any platform; entertainment services in the nature of _____ (specify, e.g., personal appearances by a fashion celebrity) and educational services in the nature of _____ (specify, e.g., providing live and on-line seminars in the field of beauty)

 

INTERNATIONAL CLASS 42:  providing a website featuring information in the field of interior decorating

 

INTERNATIONAL CLASS 44:  providing websites featuring information in the fields of wellness, healthy lifestyles, health and beauty

 

INTERNATIONAL CLASS 45:  providing websites featuring information in the fields of fashion, personal relationships, and  _____ (specify type, e.g., religious, nomadic, gay, lesbian, bi-sexual and transgender) lifestyles

 

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 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 goods and/or services that are classified in at least eight classes; however, applicant submitted a fee sufficient for only one 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.

 

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

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

 

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 October 16, 2019 for

U.S. Trademark Application Serial No. 88533957

 

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. 

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

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 16, 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.”