To: | NPAccel (sasha@kamlawfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88569121 - NPACCEL - NPaccel |
Sent: | November 08, 2019 01:45:53 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88569121
Mark: NPACCEL
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Correspondence Address:
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Applicant: NPAccel
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Reference/Docket No. NPaccel
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: November 08, 2019
INTRODUCTION
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SUBSTITUTE SPECIMEN REQUIRED (APPLIES TO CLASSES 038 AND 041)
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). 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). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION OF SERVICES AMENDMENT REQUIRED
There are many entries in the identification of services which are indefinite and must be clarified because they do not meet the USPTO’s specificity standards. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant should review the bolded suggestions below and may adopt the following language, if accurate:
Class 035: Advertising and business services, namely, digital marketing agency services, business marketing consultation services, search engine optimization for sales promotion, conversion rate website optimization, branding services in the nature of {further specify nature of services e.g., brand
evaluation services}, business development, website and blog content development for businesses, management and marketing of brands for business and/or individuals; providing marketing consulting in the field of social media and internet commerce; video content production for advertising and promotional
matter; developing and implementing promotional campaigns for businesses and individuals; advertising and business services in the nature of {specify actual
business services e.g., business management}, namely, with use of machine learning and artificial intelligence; search engine optimization with automated machine learning services or use of
artificial intelligence for sales promotion; layout services for advertising purposes; marketing services; modelling for advertising
or sales promotion; publication of publicity texts online; commercial trading in the nature of {further specify e.g., arranging of
trading transactions and commercial contracts}and providing consumer information services; advertising and marketing services based on website audits, keyword research,
website optimization, and content development; link development for profile and business directories in the nature of {further specify nature of services using
common commercial or generic name of the services}; Organization of exhibitions and presentations on internet advertising and marketing, search engine optimization; website business audits
Class 038: Telecommunications services, namely, access to content, websites and portals in the nature of {further specify nature of services e.g., providing
access to digital music websites on the internet}, providing access to databases; providing online services in the nature of {further specify e.g., providing internet
broadcasting services}; transmission of digital files; videoconferencing services; and digital communication services, namely, {further specify
e.g., communication via computer terminals by digital transmission}; website audits {misclassified as these auditing services belong in Class
035}
Class 041: Education and training services, namely, developing and conducting workshops, seminars, television {further specify e.g. workshops}, and social
media {further specify e.g. workshops} on digital marketing, business marketing consultation services, search engine optimization, advertising and marketing, advertising and
marketing with social media and internet services, advertising and marketing consulting, branding services, search engine optimization services, business development services, electronic
publications, website content development, blog content development; {Further specify services e.g., arranging and conducting educational conferences and classes for business
marketing consultation services, search engine optimization training, advertising and marketing, social media and internet marketing and branding services; exhibitions and
presentations on internet advertising and marketing, search engine optimization {misclassified as advertising exhibitions belong in Class 035}
Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
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 requirements 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.
How to respond. Click to file a response to this nonfinal Office action
/Collier L Johnson II/
Collier L Johnson II
Examining Attorney
Law Office 123
571-270-0878
collier.johnson@uspto.gov
RESPONSE GUIDANCE