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 25, 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.

 

SUMMARY OF ISSUES:

• Refusal for Title of a Specific Live Presentation
• Identification of Goods and Services Amendment Required

 

DATABASE SEARCH FOR CONFLICTING 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).  However, applicant must address the following refusal and/or requirements in a timely manner.

 

REFUSAL TITLE OF A SPECIFIC LIVE PRESENTATION:  Registration is refused because the applied-for mark, as used on the specimen of record, is used only as the title of a single creative work, namely, the title of a specific live presentation; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Posthuma, 45 USPQ2d 2011, 2013-14 (TTAB 1998) (citing In re Cooper, 254 F.2d 611, 612-16, 117 USPQ 396, 398-400 (C.C.P.A. 1958)); TMEP §§904.07(b), 1301.02(d).

 

Specifically, applicant’s specimen of record only documents a single instance of the presentation, based on the dates and location of the event.  Thus, the document does not specify that the services are ongoing or the program takes place more than once.

 

Applicant may respond to this refusal by submitting evidence that the applied-for mark is used to identify a series of works or presentations, rather than a single presentation.  See TMEP §1301.02(d).  The name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the series.  See In re Posthuma, 45 USPQ2d at 2013-14; TMEP §§1202.08(c), 1301.02(d); cf. In re Scholastic, Inc., 23 USPQ2d at 1777-78.  Evidence of a series includes ticket stubs or advertising for different theatrical or musical performances (not for the same show) that show the mark as a source identifier for the series as well as distinguish the mark from the individual titles of the works.  See TMEP §§1202.08(c), 1301.02(d).

 

If applicant cannot satisfy the requirement for evidence of a series, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use along with evidence of use on a series.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use without further evidence of a series, the same refusal will issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

IDENTIFICATION OF SERVICES AMENDMENT REQUIRED:  Applicant's identification of services is unacceptable as written and must be amended because portions of the identification are overly broad, indefinite, or misclassified.  See TMEP §1402.01.  The identification of services must be specific, definite, clear, accurate, and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for applicant's services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Specifically, in International Class 035, applicant’s identification of services states, “Organizing, arranging, promoting, and conducting business networking and other events for professionals in the risk management, blockchain technology, data analytics, property-casualty, life, annuity, and retirement insurance industries.”  While “organizing, arranging, promoting and conducting business networking events for professionals in the risk management, blockchain technology, data analytics, property-casualty, life, annuity, and retirement insurance industries” would be acceptable as written, the language “other events” is indefinite and must be amended to further specify the nature of these events.

 

Applicant’s identification of services in International Class 041 states, “Educational services, namely, organizing, arranging, promoting, and conducting educational conferences, seminars, workshops, and programs for professionals in the risk management, blockchain technology, data analytics, property-casualty, life, annuity, and retirement insurance industries”.  This entry contains services that are misclassified.  Specifically, the promotion services applicant references would be classified in International Class 035.  (It should also be noted that this entry reference promotional services of others, as promoting or advertising of ones of goods or services is not a service for the benefit of others.) 

 

            The Office has included the following suggested language, which applicant may adopt, if accurate:

 

International Class 035:       Organizing, arranging, promoting, and conducting business networking events for professionals in the risk management, blockchain technology, data analytics, property-casualty, life, annuity, and retirement insurance industries; promoting educational conferences, seminars, workshops, and programs for professionals in the risk management, blockchain technology, data analytics, property-casualty, life, annuity, and retirement insurance industries.

 

International Class 041:       Educational services, namely, organizing, arranging, and conducting educational conferences, seminars, workshops, and programs for professionals in the risk management, blockchain technology, data analytics, property-casualty, life, annuity, and retirement insurance industries

 

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.

 

Response required.  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.

 

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.    

 

 

/Lee B. Hunt/

Trademark Examining Attorney

USPTO-- Law Office 115

Lee.Hunt@USPTO.gov

Direct Phone: (571) 272-8129

 

 

 

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 25, 2019 for

U.S. Trademark Application Serial No. 88585395

 

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. 

 

 

/Lee B. Hunt/

Trademark Examining Attorney

USPTO-- Law Office 115

Lee.Hunt@USPTO.gov

Direct Phone: (571) 272-8129

 

 

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 25, 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.”