To: | COMMONSPIRIT HEALTH (uspt@polsinelli.com) |
Subject: | U.S. Trademark Application Serial No. 88572230 - 060333 |
Sent: | November 15, 2019 11:50:00 AM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88572230
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Correspondence Address: |
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Applicant: COMMONSPIRIT HEALTH
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Reference/Docket No. 060333
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 15, 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.
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).
REQUIREMENT TO AMEND THE IDENTIFICATION OF SERVICES
The wording “charitable services, namely, promoting corporate social responsibility initiatives” in the identification of services is indefinite and must be clarified because the nature of the services is not clear.
The wording “charitable services, namely, promoting corporate social responsibility initiatives” in the identification of services is duplicative. Therefore, the wording should be struck from the identification of services.
The wording “charitable services, namely, organizing and conducting charity auctions and galas for charitable fund raising purposes” in the identification of services is indefinite and must be clarified because the nature of the services is not clear and includes services classified in multiple classes.
Applicant may substitute the following wording, if accurate (suggestion are bold):
Class 35: Charitable services, namely, promoting the
charitable giving of others, for others; charitable services, namely, promoting, tracking and
publicizing charitable donations; charitable services, namely, promoting public awareness of substance abuse, eating disorders, self-injury, chronic illness, concussion prevention, postpartum
depression, maternal mood disorders, HIV/AIDS, and infectious diseases; charitable services, namely, promoting public awareness of the need to do good deeds for others; charitable services, namely,
organizing and conducting volunteer programs and community service projects; charitable services, namely, promoting corporate social responsibility initiatives for others; charitable services, namely, promoting, organizing and developing projects that aim to improve the lives of underprivileged and impoverished people; charitable services, namely, promoting corporate social responsibility initiatives; charitable services, namely, promoting, organizing and developing projects that aim to improve
the lives of underprivileged and impoverished people, namely, homeless outreach, assistance and intervention, transitional housing placement; charitable services, namely, promoting and publicizing
the charitable services and giving of others through encouraging, celebrating and promoting acts of kindness and exemplary business practices; charitable services, namely, organizing and developing
charitable projects that aim to foster peace and kindness through art; charitable services, namely, promoting public awareness of the need for monetary assistance, healthcare, education,
environmental awareness, and volunteerism to aid women and children in developing countries; charitable services, namely, developing and coordinating volunteer projects; charitable services, namely,
organizing and conducting charity auctions and galas for charitable fund raising purposes; charitable services, namely, organizing and developing projects that aim to
promote global awareness about human trafficking and the commercial sex industry; charitable services, namely, promoting, organizing and developing projects to promote awareness of environmental
conservation
Class 36: Charitable services, namely, organizing and conducting special events, namely, galas for charitable fund raising purposes
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.
Multiclass Advisory
The application identifies 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 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(s) already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 2 classes. While the applicant originally filed this application and paid a fee for 6 classes, including Class 36, the applicant has subsequently dropped 5 classes, including Class 36, from this application in its Request to Divide dated August 19, 2019. As a result of the abandonment of Class 36, the application fees are now insufficient to cover subsequently adding Class 36 to this application again. Thus, 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.
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
/Ryan Cianci/
Trademark Attorney
Law Office 116
571-270-3721
ryan.cianci@uspto.gov
RESPONSE GUIDANCE