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:  April 13, 2020

 

 

This Office action is in response to applicant’s communication filed on March 25, 2020.  Applicant’s foreign registration was received and made of record.  Applicant’s translation statement was received and made of record.  Applicant’s amended identification of goods was received and made of record.  Upon review, the following requirement is continued and made final.

 

IDENTIFICATION OF SERVICES

 

The identification of services remains indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The word “advice” and “consultancy” services must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e).  This wording is indefinite because it does not specify the subject matter of the services.  Further, this wording could identify services in more than one international class.  

 

Consulting services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 035 and “computer technology consultancy” is classified in International Class 042.  TMEP §1402.11(e). 

 

The wording “information services” in the identification of services is indefinite and too broad and must be clarified because the wording does not specify the subject matter of the services and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  Classification of information services is based on the subject matter of the information provided.  TMEP §1402.11(b). 

 

Applicant may adopt the following wording, if accurate: 

 

“Advertising services; marketing services; promotional services; business management and information services; providing office functions; business research; market research services; consumer marketing research; dissemination of advertising for others via the Internet; the bringing together, for the benefit of others, of a variety of communications and telecommunications apparatus, instruments and software, enabling customers to conveniently view and purchase those goods, including such services provided on-line from a computer database, the Internet or other electronic network; the bringing together, for the benefit of others, of a variety of services in the field of entertainment, fashion, information services, fashion design services, lifestyle information services, life coaching services, health, beauty and fitness information, music, sports, news, current affairs reporting and information services, technology information services; on-line retail store services featuring clothing, footwear, cosmetics, jewellery, fashion accessories, leather goods, luggage, bags and eyewear; online retail store services for the bringing together for the benefit of others, of a variety of goods, namely, clothing and footwear, cosmetics, jewellery, fashion accessories, leather goods, luggage, bags and eyewear, enabling customers to conveniently purchase those goods from an Internet website or by means of telecommunications or by means of a global network or by mail order catalogue or from a retail store; advertising and promoting the goods and services of others via a global computer network; promoting the goods and services of others by providing a website featuring coupons, offers, rebates, reward cards, consumer reviews, links to the retail websites of others, online catalogues featuring a wide variety of consumer goods of others, comparison shopping, and discount information; commercial assistance to advertisers relating to creating, managing, and organising online advertising and online product listings; provision of advertising space through computer networks and websites; distribution of advertising material and dissemination of advertising messages; providing a searchable online advertising guide featuring the goods of third party sellers; business information services; electronic shopping retail store services featuring clothing and footwear, cosmetics, jewellery, fashion accessories, leather goods, luggage, bags and eyewear; provision of advertising space for sellers and buyers to advertise, market and solicit goods and conclude sales transactions; commercial evaluation and rating of sellers' goods, the value and price of sellers' goods, buyers' and sellers' performance, delivery, and overall experience in connection therewith; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; auctioning; auctioneering services; assistance, namely, providing online advice, recommendations and suggestions for purchasing goods and services, for others; searching, namely, using online and electronic search tools to collate, aggregate and present data in computer files, for others; demonstration of goods; distribution of samples, namely, samples of the goods of third party sellers; commercial information agency services; assistance, namely, providing a website to assist with the procurement of goods and services, for others; compilation and systemization, namely, the collation, aggregation, structuring and presentation of data into computer databases; online advertising services on the Internet and other global computer network systems; market analysis; marketing research; presentation of goods on communication media, for retail purposes; rental of publicity material; rental of advertising space; renting out of advertising time in communication media; computerised online ordering featuring general consumer merchandise; provision of business information relating to online shopping for fashion goods; promoting the goods and services of others by providing a website featuring product reviews and product information; organisation of fashion shows for commercial purposes; arranging and conducting of exhibitions for business purposes; administration of loyalty programmes involving discounts or incentives; promoting the goods and services of others by means of a loyalty rewards card scheme; Internet services, namely, on-line business directories featuring information, sites and other resources available on a global computer network for others; compilation of business directories, namely, business and commercial directories featuring third party retailers and their goods and services, for publication on computer databases, the Internet or other electronic networks; search engine marketing available on global computer networks for others; organising content, namely, the compilation and aggregation of commercial information provided over a global computer network according to user preference; data retrieval services, namely, the collection, aggregation and structuring of data; data processing services; data management services for use in debt collection, namely, electronic data collection and on-line claims management; collection of quality metric data for retailers for business purposes; business data analysis; business strategic planning services provided to retailers and other for profit corporations and organisations; economic forecasting, marketing, market research, market analysis and consumer survey services; compilation of statistical information; providing trade information; dissemination of advertising for others via wireless network, telecommunication apparatus or devices or a global computer network; compilation of information into computer databases; compilation of statistics; cost price analysis; price comparison services; providing an on-line commercial information directory on the internet; compilation and systemisation of information into computer databases; electronic commerce services, namely, providing commercial information about products via telecommunication networks for advertising and sales products; publicity and sales promotion relating to goods and services, offered and ordered by telecommunications; promoting the goods and services of others by means of the issuance of loyalty rewards cards and gift cards; providing business advice, consultancy and information services, namely, online advice, consultancy and information provided via a website or other online platform in connection with the promotion of the retail goods of others and the collection, aggregation and structuring of consumer browsing and purchasing data,” in International Class 035;

 

“Financial management of customers' accounts; charitable fundraising services; financial services, namely, {please insert the common commercial names of the financial services in Class 036} used in connection with the marketing and sale of third party consumer goods; financial transaction processing services, namely, clearing and reconciling financial transactions via a global computer network; bill payment services; providing financial advice, consultancy and information services, namely, {please insert the common commercial names of the financial advice, consultancy and information services in Class 036} used in connection with the marketing and sale of third party consumer goods,” in International Class 036;

 

“Telecommunication services, namely, providing online facilities for real-time interaction with other computer users concerning topics of interest relating to fashion, lifestyle and beauty and fashion, lifestyle and beauty goods; telecommunications, namely, communication with others in relation to fashion, lifestyle and beauty and fashion, lifestyle and beauty goods via multinational telecommunication networks; data transmission and reception services via telecommunication means; electronic exchange of voice, data, and graphics accessible via computer and telecommunication networks; electronic transmission of information and data; providing multiple-user access to a global computer information network; operating web-blogs, namely, in the field of fashion, lifestyle and beauty; providing on-line forums for fashion, health and lifestyle; interactive electronic bulletin boards and interactive communication services, namely, messaging services and online forums in the field of fashion, lifestyle and beauty; providing online electronic bulletin boards for transmission of messages among users in the field of general interest, fashion, health and lifestyle; transmission of information, messages, text, data, multimedia content, videos and images by electronic means; providing online facilities for real-time interaction with others for hosting, sharing, organising and conducting online meetings, gatherings, forums, chatrooms, journals, blogs and interactive discussions; providing an on-line community forums for users to post, search, watch, share, critique, rate and comment on goods and services; electronic transmission of data and information; electronic transmission of e-mail; instant messaging services; voice over IP services; communications by computer terminals; wireless broadband communication services; providing a website that gives computer users the ability to electronically transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works; providing a searchable online evaluation database featuring consumer goods for buyers and sellers; providing advice, consultancy and information services, namely, {please insert the common commercial names of the advice, consultancy and information services in Class 038} used in connection with fashion, lifestyle and beauty,” in International Class 038;

 

“Computer technology consultancy in the field of retail and consumer goods; hosting of digital content on the Internet; providing search engines for obtaining data on consumer goods on a global computer network; providing search engines for obtaining data on consumer goods on a global computer network; computer services in the nature of providing customised web pages featuring user defined information; providing on-line non-downloadable software for collating and aggregating data; providing on-line non-downloadable software for use in database management, creating and maintaining websites, blogs and forums; providing on-line non-downloadable software for granting and controlling access to documents and data; providing on-line computer mapping services; mapping services, namely, providing a website and website links to geographic information, map images; providing online non-downloadable software for tracking, managing, and optimising advertising and promotional campaigns, and calculating return on investment in connection with same; providing online non-downloadable software for tracking website traffic, e-commerce activity, customer loyalty, and sales conversion rates; providing online non-downloadable software for optimising website navigation; providing online non-downloadable software for managing, collecting, monitoring and analysing web, blog and other online site traffic, user preferences and links in real time; cloud hosting provider services of electronic databases; application service provider (ASP) featuring software for use in database management; platform as a service (PAAS) featuring computer software platforms for use in database management; software as a service (SAAS) services featuring software for use in database management; computer services, namely, providing database servers of variable capacity to third party computing and data storage facilities; technical support services, namely, troubleshooting of problems of computer software problems; technical support and consulting services related to all of the foregoing, namely, in relation to data analytics; computer software design and development for others; design and development of computer hardware and software; electronic storage of digital media namely, data, documents, text, photographs, images, music, graphics, audio, video, and multimedia content; e-mail authentication services; providing advice, consultancy and information services, namely, {please insert the common commercial names of the advice, consultancy and information services in Class 042} used in connection with retail and consumer goods,” in International Class 042; and

 

“Online social networking services; providing information in the field of social networking services; online social networking services designed for people with a common desire to meet other people with similar interests; providing on-line computer databases and on-line searchable databases in the field of social networking; copyright management; providing information relating to personal online shopping for others and personal fashion consulting services; consultancy services relating to personal fashion consulting and shopping for others, provided both online and in person; providing fashion information relating the trends in fashion and lifestyles; online social networking services accessible by means of downloadable mobile applications; social introduction agencies; personal introduction services; personal concierge services for others in the field of fashion, lifestyle and beauty; appointments to meet individual needs; concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs rendered together in an online retail environment; providing information, news, and commentary in the field of fashion, well-being and diverse human lifestyles; providing an internet website portal featuring fashion, lifestyles and beauty; providing advice, consultation and information services, namely, {please insert the common commercial names of the advice, consultancy and information services in Class 045} used in connection with fashion, beauty, lifestyle and shopping,” in International Class 045.

 

In an identification, an applicant must use the common commercial or generic name for the services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP §§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the services set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

Accordingly, this requirement is continued and made final.

 

.

 

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).

 

 

/Steven W. Jackson/

Steven W. Jackson

Trademark Attorney

Law Office 107

steven.jackson@uspto.gov

571-272-9409

 

 

 

 

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 April 13, 2020 for

U.S. Trademark Application Serial No. 88570234

 

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. 

 

 

/Steven W. Jackson/

Steven W. Jackson

Trademark Attorney

Law Office 107

steven.jackson@uspto.gov

571-272-9409

 

 

 

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 April 13, 2020, 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.”