To: | Urbanize Media LLC (trademark@frameworklaw.com) |
Subject: | U.S. Trademark Application Serial No. 88575689 - URBANIZE - N/A |
Sent: | November 16, 2019 12:02:40 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88575689
Mark: URBANIZE
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Correspondence Address:
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Applicant: Urbanize Media LLC
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Reference/Docket No. N/A
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 16, 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).
Certain wording in the identification of services is indefinite and overly broad, and therefore could include a wide array of services, including services found in other international classes, as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. More specifically, the wording “Providing information and news in the field of current events relating to commercial real estate news, editorials, media and analyses” is indefinite and overly broad wording since it is unclear as to the nature of the information and news provided as it pertains to “editorials, media and analyses”. For instance, if this wording pertains to current events the application must specify the field, as it has done so with “commercial real estate news”. However, if the applicant is providing information pertaining to editorials, media, and analyses generally, the classification of these services is contingent on the fields of the information and news provided. For instance, providing information and news pertaining to business impact analyses are classified in Class 035 whereas information and news pertaining to financial analyses would be classified in Class 036. As such, applicant must clarify the identification for an accurate identification and classification of services rendered.
Applicant may substitute the following wording, if accurate:
(Add Class) International Class 035
Providing information and news in the field of business, namely, analyses of business impacts of commercial real estate transactions and developments
(Add Class) International Class 036
Providing information and news in the field of financial analysis, namely, analyses of commercial real estate transactions and developments
International Class 041
Providing information and news in the field of current events relating to commercial real estate news, current events discussed in commercial real estate editorial reporting, current events discussed in commercial real estate media in the nature of news coverage and current events discussed in commercial real estate analyses
See TMEP §1402.01.
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 multiple-class application requirements provided below.
II. MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two or more classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 041; and applicant needs a specimen for classes 035 and/or 036. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant should note the response guidelines provided below.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov
RESPONSE GUIDANCE