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 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 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, as is referenced further in the advisory immediately below, marks in prior-filed, pending applications may present a bar to registration of applicant’s mark.

 

ADVISORY:  PRIOR-FILED, PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87292032, 87732936, 88320561, 88480423, and 88497944 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

SUMMARY OF ISSUES:

• Requirement of Definite Identification and Appropriate Classification
• Multiple-Class Application Requirements

 

REQUIREMENT OF DEFINITE IDENTIFICATION AND APPROPRIATE CLASSIFICATION

 

Certain wording in the identification of goods and services is indefinite and must be clarified for the reasons discussed below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

International Class 9

 

The identification entries “Downloadable publications” and “Downloadable webinars, podcasts, and videos” are indefinite in that the subject matter and/or field of the referenced goods must be further specified.  In addition, with respect to the first of these two entries, “Downloadable publications,” the nature of the publication (e.g., books, magazines, brochures, etc.) must also be further specified.  Suggested amendments, demonstrating the further, requisite specificity, are offered below.

 

International Class 35

 

The wording “Association services” is indefinite in that the nature of these services must be further specified.  The current wording is too broad and can encompass distinct services appropriately classified within Class 35.  A suggested amendment, demonstrating the further, requisite specificity, is suggested below.

 

Please also note, proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a). 

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id.  Also, in using semicolons in this manner, identification entries need not start with the word “and.”  For example, see the examiner’s suggested amendment below of applicant’s final entry in this class.

 

International Class 41

 

The wording “Educational services” is indefinite in that the nature of these services—and specifically the types of educational activities—must be further specified, and so must the subject matter and/or field in which the referenced services are offered.  The current wording is too broad and can encompass distinct services appropriately classified within Class 41.  A suggested amendment, demonstrating the further, requisite specificity, is suggested below.

 

Also, the wording “Educational services, namely, conducting lectures, seminars, workshops, forums, meetings, webinars, podcasts, videos, exhibitions, and conferences in the fields of optics and photonics” is too broad and can encompass services that are in more than one International Class.  For example, “educational services, namely, conducting lectures, conducting seminars, conducting workshops, conducting in-person educational forums, providing non-downloadable webinars, organizing educational exhibitions, and arranging and conducting educational conferences, all in the fields of optics and photonic” are in International Class 41, but “downloadable podcasts in the fields of optics and photonics” are in International Class 9.  Accordingly, applicant should further specify the nature of the services being referenced, and suggested amendments are offered below. 

 

Also, the wording “providing an online computer database of images related to optics and photonics” is too broad and can encompass services that are in more than one International Class.  For example, “providing an online computer database featuring educational information in the nature of instructional images related to the fields of optics and photonics” are services in International Class 41, but “providing an online computer database featuring medical information in the nature of images related to the fitting of optical lenses” are services in International Class 44.  Furthermore, “providing an online computer database featuring scientific and research information in the nature of images in the fields of optics and photonics” are services in International Class 42.  Accordingly, applicant should further specify the nature of the services being referenced, and suggested amendments are offered below.

 

International Class 42

 

Similarly, and for the reasons just referenced above, the identification entries “Providing an online searchable database in the fields of optics and photonics for use by authors and researchers” and “online information services in the fields of optics and photonics” are both too broad and can encompass services that are in more than one International Class.  Specifically, further specification of the nature of the information being provided in these fields is required, to ensure appropriate classification.  Accordingly, applicant should further specify the nature of the services being referenced, and suggested amendments are offered below.

 

Please note, in addition to the need for this further specification so as to allow for appropriate identification and classification, the USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.

 

Applicant may adopt the following identification, if accurate: 

 

Class 9:  Downloadable electronic publications, namely, journals, magazines, books, conference papers, teaching guides, industry reports, and market reports in the fields of optics and photonics; downloadable electronic publications in the nature of journals, periodicals, books, conference papers, teaching guides, industry reports, and market reports in the fields of optics and photonics; downloadable webinars, podcasts, and video recordings in the fields of optics and photonics; downloadable webinars, podcasts, and recorded videos in the fields of optics and photonics

 

Class 35:  Association services, namely, promoting public awareness of the fields of optics and photonics; promoting the goods and services of others by placing advertisements and promotional displays on an electronic website accessed through computer networks; promoting the goods and services of others by placing advertisements in periodically published journals and other publications; association services, namely, promoting the general interest of those concerned with the fields of optics and photonics; association services, namely, organizing chapters and sections of a membership organization for persons interested in the fields of optics and photonics and promoting the interests of the members thereof

 

Class 41:  Educational services, namely, conducting programs in the fields of optics and photonics; educational services, namely, conducting lectures, conducting seminars, conducting workshops, conducting in-person educational forums, providing non-downloadable webinars, organizing educational exhibitions, and arranging and conducting educational conferences, all in the fields of optics and photonics; publishing of journals, periodicals, books, teaching guides, industry reports, market reports, and conference papers; online electronic publishing of journals, periodicals, books, and conference papers in the fields of optics and photonics; providing online and non-downloadable publications in the nature of journals, periodicals, books, teaching guides, conference papers, industry reports, and market reports in the fields of optics and photonics; providing recognition by the way of awards and honors to demonstrate excellence in the fields of optics and photonics; providing an online computer database featuring educational information in the nature of instructional images related to the fields of optics and photonics

 

Class 42:  Providing an online searchable database featuring scientific and research information in the fields of optics and photonics for use by authors and researchers; online information services, namely, providing online scientific and research information in the fields of optics and photonics; providing an online computer database featuring scientific and research information in the nature of images in the fields of optics and photonics

 

Applicant’s goods and/or 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 goods and/or 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/or 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/or services will further limit scope, and once goods and/or 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that could potentially be classified in at least 5 classes.  However, applicant submitted fees sufficient for only 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.

 

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. 

 

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  

 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@uspto.gov

 

 

ADDITIONAL 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 15, 2019 for

U.S. Trademark Application Serial No. 88576157

 

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. 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@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 15, 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.”