To: | Global Wildlife Conservation (dc_ipdocketing@akingump.com) |
Subject: | U.S. Trademark Application Serial No. 88575887 - EARTH ALLIANCE - 880615.0001 |
Sent: | November 13, 2019 02:26:53 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88575887
Mark: EARTH ALLIANCE
|
|
Correspondence Address: AKIN GUMP STRAUSS HAUER & FELD LLP
|
|
Applicant: Global Wildlife Conservation
|
|
Reference/Docket No. 880615.0001
Correspondence Email Address: |
|
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 13, 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.
SUMMARY OF ISSUES:
SEARCH RESULTS - PRIOR PENDING APPLICATION
The filing date of pending U.S. Application Serial No. 1478823 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.
While applicant need not respond to the potential refusal, applicant must respond to the following.
MARK DESCRIPTION
The following description is suggested, if accurate:
The mark consists of a stylized circular design comprised of a stylized “e” placed over a stylized “a”. The words “EARTH ALLIANCE” are to the right of the design.
IDENTIFICATION OF SERVICES
Applicant has classified “developing, organizing and administering projects and programs…” in International Class 42; however, the proper classification of promotional services is International Class 35. Therefore, applicant may respond by (1) reclassifying these services in the proper international class, or (2) deleting these services from the application in class 42. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may substitute the following wording, if accurate:
Class 35: Promoting public awareness of climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats, by means of public advocacy; promoting awareness of social entrepreneurs, non-profit and charitable organizations, and policy and law change related to climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats; developing, organizing and administering volunteer projects and programs in the field of climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats
Class 36: Charitable fund raising services; accepting and administering monetary charitable donations and contributions to support the development of educational and infrastructure projects in under developed and under privileged communities and regions; providing charitable funding for programs and endeavors to address and promote public awareness of climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats; providing charitable funding for the development and creation of documentaries, films, news, reports, and materials related to climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats
Class 41: Educational and training services, namely, conducting exhibitions, classes, seminars, webinars, conferences, training programs, and workshops in the field of climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats
Class 42: Providing a website featuring scientific information about climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats; conducting scientific research and exploration in the field of climate change and global warming, environmental sustainability projects, green and sustainable agriculture, conservation and protection of wildlife and marine life, and natural habitats
In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a). If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names. See id.
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 goods and/or 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 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.
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 refusal(s) and/or requirement(s) 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.
/Christopher M. Nunley/
Examining Attorney
Law Office 104
(571) 270-3782
Christopher.Nunley@uspto.gov
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
RESPONSE GUIDANCE