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:  November 12, 2019

 

 

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.

 

DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• Requirement – Amend Identification of Goods and Services
• Advisory – Prior-Filed Application

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS AND SERVICES

Applicant’s applied-for mark identifies the following goods and services:

 

Class 9: “Downloadable mobile applications for lease-purchase financing or loans of general merchandise; downloadable mobile applications for rent-to-own financing or loans of general merchandise; downloadable mobile applications for use in leasing, financing, and purchasing general merchandise; downloadable mobile applications for use in customizing and adjusting leasing, financing, and purchasing options for general merchandise”

Class 35: “Retail store services featuring general merchandise; online retail store services featuring general merchandise; retail store services in the field of general merchandise that can be purchased under a rent-to-own contract; online retail store services in the field of general merchandise that can be purchased under a rent-to-own contract; retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories; online retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories”

Class 36: “Lease-purchase financing; rent-to-own financing; lease-purchase financing or loans for general merchandise; rent-to-own financing or loans for general merchandise”

Class 43: “Rental of general merchandise; rental of furniture; rental of home decor and accessories; rental of tableware; rental of dinnerware; rental of lighting apparatus for personal use; rental of fixtures; rental of appliances; rental of electronic devices; rental of outdoor home furnishings and accessories”

 

The wording “Retail store services featuring general merchandise; online retail store services featuring general merchandise; retail store services in the field of general merchandise that can be purchased under a rent-to-own contract; online retail store services in the field of general merchandise that can be purchased under a rent-to-own contract” in the identification of services is indefinite and must be clarified because general merchandise does not adequately describe the field of goods that applicant is selling.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Retail store services featuring a wide variety of consumer goods of others; online retail store services featuring a wide variety of consumer goods of others; retail store services featuring a wide variety of consumer goods of others that can be purchased under a rent-to-own contract; online retail store services featuring a wide variety of consumer goods of others that can be purchased under a rent-to-own contract.”

 

The wording “loans for general merchandise” in the identification of services in International Class 36 is indefinite and must be clarified because it is unclear what type of loan and for what purpose the loan is being offered.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “providing temporary loans for the purchase of general merchandise.”

 

Applicant must clarify the wording “Rental of general merchandise”; “rental of fixtures”; and “rental of appliances” in the identification of services in International Class 43 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the specific items being rented is not specified.  Further, this wording could identify services in more than one international class.  For example, “rental of equipment for playing laser tag games” are in International Class 41 and “rental of dishwashers for household purposes” are in International Class 37.  Applicant may substitute the following wording, if accurate:  “rental of office furniture”; “rental of fixtures, namely, cooking stoves”; and “rental of small kitchen appliances.”

 

Applicant must clarify the wording “rental of electronic devices” in the identification of goods and services in International Class 43 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear for what purpose the electronic devices will be used.  Further, this wording could identify services in more than one international class.  For example, “rental of electronic devices for watching DVD movies” is in International Class 41 and “rental of electronic sports training simulators” is in International Class 42. 

 

If accurate, applicant may adopt the following identification and associated classifications, which accounts for all the necessary revisions as discussed above:  

 

Class 9: {no changes}

Class 35: “Retail store services featuring a wide variety of consumer goods of others; online retail store services featuring a wide variety of consumer goods of others; retail store services featuring a wide variety of consumer goods of others that can be purchased under a rent-to-own contract; online retail store services featuring a wide variety of consumer goods of others that can be purchased under a rent-to-own contract; retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories; online retail store services featuring consumer goods, namely, furniture, home decor and accessories, tableware, dinnerware, lighting, fixtures, appliances, electronic devices, outdoor home furnishings and accessories”

Class 36: “Lease-purchase financing; rent-to-own financing; providing temporary loans for the purchase of general merchandise”

Class 37: “Rental of dishwashers for household purposes”

Class 41: “Rental of equipment for playing laser tag games; rental of electronic devices for watching DVD movies”

Class 42: “Rental of electronic sports training simulators”

Class 43: “Rental of office furniture; rental of furniture; rental of home decor and accessories; rental of tableware; rental of dinnerware; rental of lighting apparatus for personal use; rental of fixtures, namely, cooking stoves; rental of small kitchen appliances; rental of electronic devices for personal home use; rental of outdoor home furnishings and accessories”

 

If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to include associated International Classes. Applicant may also choose to add some but not all Classifications, or limit the goods and services as specified to include only the goods and services in the current Classifications. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant’s goods and 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 goods and services or add goods and 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 goods and 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 goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  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.

 

Applicant should note the additional requirements pertaining to multiple-class applicants, as set forth below.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and 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 services that are classified in at least seven (7) classes; however, applicant submitted a fee sufficient for only four (4) classes.  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.

 

 The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

Applicant should note the advisory below

 

ADVISORY – PRIOR-FILED APPLICATION

The filing date of pending U.S. Application Serial No. 87065406 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Response guidelines.  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 requirement 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  

 

 

/Douglas A. Mondell/

Douglas A. Mondell, Esq.

Law Office 127

(571) 272-0120

douglas.mondell@uspto.gov

 

 

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 November 12, 2019 for

U.S. Trademark Application Serial No. 88570993

 

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. 

 

 

/Douglas A. Mondell/

Douglas A. Mondell, Esq.

Law Office 127

(571) 272-0120

douglas.mondell@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 November 12, 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.”