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:  October 28, 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).

 

Identification of Goods and Services

 

The identification of goods and services is indefinite and must be clarified because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Class 09: Downloadable computer software in the field of <specify field and function of software>, downloadable computer software applications in the field of <specify field and function of software>, and downloadable electronic publications in the nature of digital files, PDF files, e-books, electronic documents, digital audio files, digital video files, digital animation files, podcast files, multimedia files, worksheets, hand-outs, assignments, journals, activity books, quizzes, tests, study guides, teacher lesson plans, and eCourses featuring educational instruction and information on a variety of elementary, middle-school, high school, and college-level educational subjects and topics, namely, reading, literature, Shakespeare, Math, Algebra, Calculus, Trigonometry, Geometry, Chemistry, Organic Chemistry, Biology, Microbiology, Physics, Astronomy, Computer Science, Geology, History, Psychology, Philosophy, Economics, Film, Health, Art History, Language, Foreign languages, English, English as a second language, Sign Language, Spanish, French, Italian, German, Hebrew, Japanese, Chinese, Latin, Law, Anatomy, Medicine, Nursing, Music, Marketing, Macroeconomics, Accounting, Mythology, Women's Studies, Sociology, and standardized educational proficiency examination preparation; downloadable electronic publications, namely, series of fiction and non-fiction e-books on a variety of topics; Downloadable publications, namely fiction and non-fiction children's e-books, toddler e-books, beginner reader e-books, young-reader e-books, teen e-books, and e-books featuring Christmas, Easter, Jewish, Muslim and other religious holiday stories; downloadable publications, namely, picture e-books; downloadable educational publications, namely, electronic educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, and educational electronic booklets in the fields of reading, writing, language, mathematics, history and science 

 

Class 16:  Publications, namely, educational publications for beginning readers, being non-fiction books, reference books, dictionaries, worksheets, hand-outs, assignments, journals, activity books, printed quizzes, printed tests, study guides, teacher lesson plans, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, teacher manuals, and educational booklets featuring instruction and information on a variety of elementary, middle-school, high school, and college-level educational subjects and topics; series of fiction and non-fiction books on a variety of topics; blank paper journals and sketchbooks; fiction and non-fiction children's books, toddler books, beginner reader books, young-reader books, teen books, and books featuring Christmas, Easter, Jewish, Muslim and other religious holiday stories; picture books; educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, and educational booklets in the fields of reading, writing, language, mathematics, history and science; school supplies, namely, erasers, binders, presentation folders, notepads, writing paper pads, blank paper, ruled paper, loose-leaf paper, blank notebooks, markers, paper staplers, paper staple removers, stationery, calendars, desktop organizers, rubber stamps and ink pads, binder and paper clips, dispensers for adhesive tape for stationery or household purposes, pen and pencil holders, stationery cases and holders and file trays for desk accessories, book covers, book ends, book holders, book marks, book plates, paper weights for books, paper weights, push pins, paper clips, sketchbooks, scratch pads, address books, and dry erase writing boards; educational activity kits sold as a unit comprised of children's arts and crafts paper kits, pens, pencils, paint brushes, erasers, markers, stickers, printed activity sheets, toys, books, workbooks, paper stationery pads, printed photos, printed puzzles, temporary tattoo transfers, and coloring books; children's activity kits, namely, hobby craft kits comprised of drawing paper; arts and craft paint kits; canvas for painting; craft and activity kits for children, namely, arts and craft paint kits; craft and activity kits for children for painting and decorating wooden objects, consisting primarily of paint and paint brushes, and also containing wooden objects to be painted; paint brushes,  educational activity kits comprised of activity cards, books, teacher's guides, digital content in the nature of prerecorded educational videos for learning and temporary use of non-downloadable interactive educational computer application software for learning, and supporting manipulative teaching materials for educational activities in the fields of science, technology, engineering, and mathematics; educational activity kits comprised of activity cards, books, teacher's guides, digital content in the nature of prerecorded educational videos for learning and temporary use of non-downloadable interactive educational computer application software for learning, and supporting manipulative teaching materials for educational activities in the fields of science, technology, engineering, and mathematics; educational and multimedia activity kits comprising of flash cards, workbooks, jigsaw puzzles, bulletin boards, posters, art paper, construction paper, arts and crafts paint kits, pen cases, drawing rulers, bookmarks, book plates, book covers, note pads, desk pads, stencils, file folders, rubber stamps, paper bags, art prints; color prints; lithographic prints; photographic prints; decorative stickers; stationery, namely, writing paper, note cards, post cards, diaries, pens, pencils, pencil cases, paper stationery portfolios, binders, notebooks; calendars; photographs; decals and stickers; educational activity kits comprising, school supplies, namely, erasers, binders, presentation folders, notepads, writing paper pads, blank paper, ruled paper, loose-leaf paper, blank notebooks, markers, paper staplers, paper staple removers, stationery, calendars, desktop organizers, rubber stamps and ink pads, binder and paper clips, dispensers for adhesive tape for stationery or household purposes, pen and pencil holders, stationery cases and holders and file trays for desk accessories, book covers, book ends, book holders, book marks, book plates, paper weights for books, paper weights, push pins, paper clips, sketchbooks, scratch pads, address books, and dry erase writing boards 

 

Class 35: <the semi-colons divide the identification and must be adjusted as outlined below> Retail and online retail bookstore services featuring downloadable electronic publications in the nature of digital files, PDF files, e-books, electronic documents, digital audio files, digital video files, digital animation files, podcast files, multimedia files, worksheets, hand-outs, assignments, journals, activity books, quizzes, tests, study guides, teacher lesson plans, and eCourses featuring educational instruction and information on a variety of elementary, middle-school, high school, and college-level educational subjects and topics, namely, reading, literature, Shakespeare, Math, Algebra, Calculus, Trigonometry, Geometry, Chemistry, Organic Chemistry, Biology, Microbiology, Physics, Astronomy, Computer Science, Geology, History, Psychology, Philosophy, Economics, Film, Health, Art History, Language, Foreign languages, English, English as a second language, Sign Language, Spanish, French, Italian, German, Hebrew, Japanese, Chinese, Latin, Law, Anatomy, Medicine, Nursing, Music, Marketing, Macroeconomics, Accounting, Mythology, Women's Studies, Sociology, and standardized educational proficiency examination preparation; Retail Store and Online Retail Store services featuring Publications, namely, educational publications for beginning readers, non-fiction books, reference books, dictionaries, worksheets, hand-outs, assignments, journals, activity books, printed quizzes, printed tests, study guides, teacher lesson plans, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, teacher manuals, and educational booklets featuring instruction and information on a variety of elementary, middle-school, high school, and college-level educational subjects and topics; retail and online retail bookstore services featuring a series of fiction and non-fiction books on a variety of topics; Retail Store and Online Retail Store services featuring blank paper journals and sketchbooks, fiction and non-fiction children's books, toddler books, beginner reader books, young-reader books, teen books, and books featuring Christmas, Easter, Jewish, Muslim and other religious holiday stories, picture books, educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, and educational booklets in the fields of reading, writing, language, mathematics, history and science; retail and online retail bookstore services featuring school supplies, namely, erasers, binders, presentation folders, notepads, writing paper pads, blank paper, ruled paper, loose-leaf paper, blank notebooks, markers, paper staplers, paper staple removers, stationery, calendars, desktop organizers, rubber stamps and ink pads, binder and paper clips, dispensers for adhesive tape for stationery or household purposes, pen and pencil holders, stationery cases and holders and file trays for desk accessories, book covers, book ends, book holders, book marks, book plates, paper weights for books, paper weights, push pins, paper clips, sketchbooks, scratch pads, address books, and dry erase writing boards; retail and online retail bookstore services featuring educational activity kits sold as a unit comprised of children's arts and crafts paper kits, pens, pencils, paint brushes, erasers, markers, stickers, printed activity sheets, toys, books, workbooks, paper stationery pads, printed photos, printed puzzles, temporary tattoo transfers, and coloring books, children's activity kits, namely, hobby craft kits comprised of drawing paper, arts and craft paint kits, canvas for painting, craft and activity kits for children, namely, arts and craft paint kits, craft and activity kits for children for painting and decorating wooden objects, consisting primarily of paint and paint brushes, and also containing wooden objects to be painted, paint brushes educational activity kits comprised of activity cards, books, teacher's guides, digital content in the nature of prerecorded educational videos for learning and temporary use of non-downloadable interactive educational computer application software for learning, and supporting manipulative teaching materials for educational activities in the fields of science, technology, engineering, and mathematics; Retail Store and Online Retail Store services featuring educational activity kits comprised of activity cards, books, teacher's guides, digital content in the nature of prerecorded educational videos for learning and temporary use of non-downloadable interactive educational computer application software for learning, and supporting manipulative teaching materials for educational activities in the fields of science, technology, engineering, and mathematics, educational and multimedia activity kits comprising of flash cards, workbooks, jigsaw puzzles, bulletin boards, posters, art paper, construction paper, arts and crafts paint kits, pen cases, drawing rulers, bookmarks, book plates, book covers, note pads, desk pads, stencils, file folders, rubber stamps, paper bags, art prints, color prints, lithographic prints, photographic prints, decorative stickers, stationery, namely, writing paper, note cards, post cards, diaries, pens, pencils, pencil cases, paper stationery portfolios, binders, notebooks, calendars, photographs, decals and stickers, educational activity kits comprising, school supplies, namely, erasers, binders, presentation folders, notepads, writing paper pads, blank paper, ruled paper, loose-leaf paper, blank notebooks, markers, paper staplers, paper staple removers, stationery, calendars, desktop organizers, rubber stamps and ink pads, binder and paper clips, dispensers for adhesive tape for stationery or household purposes, pen and pencil holders, stationery cases and holders and file trays for desk accessories, book covers, book ends, book holders, book marks, book plates, paper weights for books, paper weights, push pins, paper clips, sketchbooks, scratch pads, address books, and dry erase writing boards 

Class 41:  Educational book <or specify> publishing services; educational services, namely, providing online instruction and information<Information is classified by subject matter, and would require further specification even if it is educational>,  via a web site on a variety of elementary, middle-school, high school, and college-level educational subjects and topics 

 

Class 42:  Software as a Service (SaaS) services, namely, pre-paid subscription and non-downloadable online instruction and information via a web site and pre-paid subscription services<this is indefinite as it doesn’t appear to be a software, and subscription and information services will be classified by the subject matter. The identification is unclear> featuring worksheets, hand-outs, assignments, journals, activity books, quizzes, tests, and study guides on a variety of elementary, middle-school, high school, and college-level educational subjects and topics; non-downloadable computer software and online non-downloadable computer software applications <These are not software services, and likely are already covered in the other classes listed. Applicant must amend the identification to make clear this is software in a field and a function> in the nature of digital files, PDF files, e-books, electronic documents, digital audio files, digital video files, digital animation files, podcast files, multimedia files, worksheets, hand-outs, assignments, journals, activity books, quizzes, tests, study guides, teacher lesson plans, and eCourses featuring educational instruction and information on a variety of elementary, middle-school, high school, and college-level educational subjects and topics, namely, reading, literature, Shakespeare, Math, Algebra, Calculus, Trigonometry, Geometry, Chemistry, Organic Chemistry, Biology, Microbiology, Physics, Astronomy, Computer Science, Geology, History, Psychology, Philosophy, Economics, Film, Health, Art History, Language, Foreign languages, English, English as a second language, Sign Language, Spanish, French, Italian, German, Hebrew, Japanese, Chinese, Latin, Law, Anatomy, Medicine, Nursing, Music, Marketing, Macroeconomics, Accounting, Mythology, Women's Studies, Sociology, and standardized educational proficiency examination preparation; online non-downloadable computer software and online non-downloadable computer software applications in the nature of series of fiction and non-fiction books on a variety of topics<as above, this doesn’t appear to be software>; fiction and non-fiction children's books, toddler books, beginner reader books, young-reader books, teen books, and books featuring Christmas, Easter, Jewish, Muslim and other religious holiday stories; picture books; educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, teacher guides, manuals, and educational booklets in the fields of reading, writing, language, mathematics, history and science<duplicate and misclassified>. 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

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  

 

If the applicant has any questions or needs assistance regarding this action, please telephone the assigned examining attorney.

 

 

/FrankLattuca/

Frank Lattuca

Examiing Attorney

Law Office 109

(571) 270-1518

Frank.Lattuca@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 October 28, 2019 for

U.S. Trademark Application Serial No. 88594410

 

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. 

 

 

/FrankLattuca/

Frank Lattuca

Examiing Attorney

Law Office 109

(571) 270-1518

Frank.Lattuca@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 October 28, 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.”