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 21, 2019

 

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.  

 

INTRODUCTION

 

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).

 

However, applicant must address the following refusal(s) and/or requirement(s):

 

SUMMARY OF ISSUES:

• TRANSLATION
• CLASSIFICATION AND IDENTIFICATION OF SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

TRANSLATION

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark “NAVIGA”.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “NAVIGA” in the mark is “NAVIGATE” or “SAIL” or “BROWSE”.  TMEP §809.03.  See attached translation evidence.

 

CLASSIFICATION AND IDENTIFICATION OF SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

INTERNATIONAL CLASS 35

The following wording in the identification of services is indefinite and must be clarified because the wording does not make clear the exact nature of the services with enough specificity by common commercial or generic name for proper identification and classification of the services in this class and/or the wording is too broad and could identify services in more than one international class, namely:

 

1. Dissemination of news in the fields of international, national, state, and local government and politics, and business [As news agency services, the dissemination of news is properly classified in International Class 41.  In the present case, the exact nature of the dissemination service wording must be further clarified to identify the common commercial or generic name for the services and the services classified accordingly.].

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

INTERNATIONAL CLASS 36

The following wording in the identification of services is indefinite and must be clarified because the wording does not make clear the exact nature of the services with enough specificity by common commercial or generic name for proper identification and classification of the services in this class and/or the wording is too broad and could identify services in more than one international class, namely:

 

1. Providing information services in the fields of economic, financial, monetary and stock exchange information, currency trading information [Applicant must identify the specific information service provided.  In general, providing information is classified according to subject matter.  In the present case, providing information in the field of economics is properly classified in International Class 35.  The wording “financial”, “stock exchange information” and “currency trading information” are clear informational subject matters properly classified in this class.  However, the wording “monetary” must be further clarified as a subject matter for proper classification of the information services related thereto.];
2. dissemination of news in the fields of international, national, state, and local economics, finance, securities, and commodities [As news agency services, the dissemination of news is properly classified in International Class 41.  In the present case, the exact nature of the dissemination service wording must be further clarified to identify the common commercial or generic name for the services and the services classified accordingly.].

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

INTERNATIONAL CLASS 41

The following wording in the identification of services is indefinite and must be clarified because the wording does not make clear the exact nature of the services with enough specificity by common commercial or generic name for proper identification and classification of the services in this class and/or the wording is too broad and could identify services in more than one international class, namely:

 

1. Dissemination of news in the fields of international, national, state, and local current events news, sports, entertainment, education, art, and governmental current events [As news agency services, the dissemination of news is properly classified in International Class 41.  In the present case, the exact nature of the dissemination service wording must be further clarified to identify the common commercial or generic name for the services and the services classified accordingly.].

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

INTERNATIONAL CLASS 42

The following wording in the identification of services is indefinite and must be clarified because the wording does not make clear the exact nature of the services with enough specificity by common commercial or generic name for proper identification and classification of the services in this class and/or the wording is too broad and could identify services in more than one international class, namely:

 

1. dissemination of news in the fields of international, national, state, and local science and technology [As news agency services, the dissemination of news is properly classified in International Class 41.  In the present case, the exact nature of the dissemination service wording must be further clarified to identify the common commercial or generic name for the services and the services classified accordingly.].

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

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 may substitute the following wording, if accurate:

 

Advertising services, namely, disseminating the advertising matter of others; provision of business information; Providing information services in the field of economics, International Class 35; and/or

 

Providing financial information; Providing information in the fields of monetary exchange, stock exchange information, and currency trading information, International Class 35; and/or

 

News agencies, namely, dissemination of news in the fields of international, national, state, and local government and politics, and business; News agencies, namely, dissemination of news in the fields of international, national, state, and local economics, finance, securities, and commodities;  News agencies, namely, dissemination of news in the fields of international, national, state, and local current events news, sports, entertainment, education, art, and governmental current events;  News agencies, namely, dissemination of news in the fields of international, national, state, and local science and technology  International Class 41; and/or

 

Providing temporary use of on-line non-downloadable software and applications for content storage, content searching, content management, content tagging, content creation, content authoring, content aggregation, content formatting, content display, content distribution, advertisement distribution, data collection, event planning, mobile application development, page layout design, web design, customer relationship management, subscription management, sales management, inventory management, electronic commerce transaction processing, and data analytics, International Class 42.

 

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).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(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(s) 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 four and possibly more classes; however, applicant submitted a fee(s) sufficient for only four class(es).  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(es) 35, 36, 41, and 42.  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).  The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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.

 

RESPONDING TO THIS OFFICE ACTION

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@USPTO.GOV

 

 

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 21, 2019 for

U.S. Trademark Application Serial No. 88585705

 

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. 

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@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 21, 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.”