Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

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:  December 09, 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.

 

ADVISORY – SEARCH DEFERRED UNTIL GOODS AND/OR SERVICES CLARIFIED

 

A search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred because applicant’s goods and/or services are so indefinite that a proper search cannot be conducted.  TMEP §704.02; see Identification of Services Overbroad and Indefinite, infra.  Until applicant submits a sufficiently definite identification of goods and/or services as required elsewhere in this Office action, action on the merits is deferred with respect to likelihood of confusion under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

APPLICANT MUST ADDRESS ISSUES SHOWN BELOW 

 

On December 3 – December 9, 2019, the examining attorney and applicant’s attorney, Jay Begler, discussed the issues below by phone and by email.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES

-          Identification of Goods and Services Overbroad and Indefinite

-          Clarification of the Number of Classes for Which Registration Is Sought Required

-          Specimen Does Not Show Use in Commerce – Amendment Required

 

IDENTIFICATION OF GOODS AND SERVICES OVERBROAD AND INDEFINITE – AMENDMENT REQUIRED

 

As an initial matter, applicant’s identification in Class 36 uses commas to connect a number of unrelated goods and services together. Applicant should amend the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  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. Applicant should amend its identification to clearly identify what goods or services are related items or distinct categories. Given the highly disparate nature of the items listed in Class 36, the trademark examining attorney assumes the “commas” in the identification are intended to function as semicolons.

 

The wording “retail sales of solar energy products, namely, solar photovoltaic (PV) panel systems comprising photovoltaic solar panels and modules for production of electricity for residential and commercial structures” in the identification of services in International Class 35 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” normally refers to selling one’s own goods and is not a registrable service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.

 

Therefore, applicant must delete “retail sales” from the identification and indicate with greater specificity the nature of the goods or services. If offering services in Class 35, applicant should specify such by identifying, e.g., “retail store services featuring solar energy products, namely, solar photovoltaic (PV) panel systems comprising photovoltaic solar panels and modules for production of electricity for residential and commercial structures,” “wholesale distributorships featuring solar energy products, namely, solar photovoltaic (PV) panel systems comprising photovoltaic solar panels and modules for production of electricity for residential and commercial structures,” and/or “on-line wholesale and retail store services featuring solar energy products, namely, solar photovoltaic (PV) panel systems comprising photovoltaic solar panels and modules for production of electricity for residential and commercial structures.” If applicant is offering its own goods for sale, solar photovoltaic panels are Class 09 goods and they should be reclassified and clearly stated as goods.

 

The wording “Real estate services” in Class 36 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. This language could refer to any number of different real estate services, be they real estate valuation services, real estate agency services, real estate rental property management services, real estate brokerage services, etc. Applicant must specify the particular kind of real estate services it offers.

 

The wording “capital and investment services” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. While “capital investment services” is a distinct and recognized service, applicant’s syntax suggests it offers “capital services” and “investment services.” Capital services could include any number of financial services related to capital, e.g., venture capital advisory services, corporate finance services in the nature of consultation in the field of capital structure, or brokerage services for capital investments. Investment services could include investment advisory services, global investment research services, hedge fund investment services, real estate investment services, etc. Applicant must clearly identify the type of services it offers, whether they be “capital investment services” or distinct capital-related and investment-related services.

 

The word “apparel and footwear” in the identification of services is misclassified as a service, indefinite, and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. As an initial matter, “apparel and footwear” refers to goods, not services, and they are improperly classified as services in Class 36. Additionally, the wording must be clarified because “apparel” does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, “apparel” could identify any distinct number of different wearable goods across multiple classes. The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “apparel and footwear” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “apparel” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses, shoes, socks, etc.). 

 

The wording “sustainable products” in the identification of services is indefinite and must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, such wording could encompass any product in any other class so long as it was “sustainable.” Put simply, such wording potentially identifies any good across Classes 1 through 34. Applicant must specify the type of good it offers in more detail. Because the nature of the goods is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording for these items beyond those discussed by applicant’s attorney and the trademark examining attorney.  See TMEP §1402.01(e).

 

The wording “marketing and promotion services” in Class 36 is classified incorrectly.  Applicant must amend the application to classify the services in International Class 35.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Additionally, applicant is reminded that marketing and promotion services must refer to services for others – the marketing and promotion of one’s own goods or services is not a recognized service. See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).

 

The wording “consulting services and E-commerce services” in the identification of services is indefinite and must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  First, “consulting services” must be clarified because consulting services are classified according to the subject matter of the consulting service. For example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42.  TMEP §1402.11(e). As such, the nature of the consulting services are unclear because applicant omits the subject matter of such services.

 

Second, “E-commerce services” is unclear because it could include any service related to e-commerce. This could include various online financial services (such as on-line trading of financial instruments, shares, options, and other derivative products) in Class 36, on-line retail store services for various goods in Class 35, developing and hosting on-line servers for the purpose of facilitating e-commerce via such servers in Class 42, and other on-line e-commerce related services. Put simply, applicant must specify the nature and type of “E-commerce service” it offers.

 

Finally, the wording “retail and on line sales of sustainable products” is misclassified, indefinite, and must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §§2.32(a)(6-7), 2.85; TMEP §§1401.02(a), 1401.03(b), 1402.01, 1402.03. As explained above, retail store services selling the goods of others are a Class 35 service, while the sale of one’s own goods is determined based on the classification of the goods being sold. See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970); TMEP §§1301.01(a)(ii), 1402.11. Neither service nor goods is properly classified in Class 36. Further, as described above, applicant must clarify whether it is acting as a retail store service selling the goods of others, or whether it is selling specific goods. Finally, “sustainable products” could include any good that is “sustainable,” and applicant thus must further specify the nature and type of sustainable products it offers. Overall, applicant must 1) specify the nature of the goods or services, 2) specify the type of sustainable products offered, and 3) classify the goods or services appropriately based on their nature.

 

Upon reviewing the application, applicant’s website, and speaking with applicant’s attorney, the trademark examining attorney is limiting his suggestions as follows. Should applicant intend to identify other goods and services, applicant should amend the identification accordingly and comply with the scope and multiple-class advisories below.

 

Applicant may adopt the following wording, if accurate (suggested language in bold):

 

Class 09:   solar energy products, namely, solar photovoltaic (PV) panel systems comprising photovoltaic solar panels and modules for production of electricity for residential and commercial structures

 

Class 25:   apparel and footwear, namely, {specify types of apparel in Class 25 here, e.g., t-shirts, pants, shoes, socks, footwear, jackets, dresses, etc.}

 

Class 35:   Retail store services featuring solar energy products in the nature of photovoltaic solar panels and modules; marketing and promotion services; consultation services in the field of {specify nature of business services in Class 35 here, e.g., retail store services featuring solar energy products, marketing and promotion services for solar energy products, etc.}; E-commerce services, namely, online retail store services featuring solar energy products in the nature of photovoltaic solar panels and modules; retail store services featuring sustainable products in the nature of {specify types of products here, e.g., solar panels and modules, appliances made of sustainable and recyclable materials, clothing made of sustainable and recyclable materials, etc.}; online retail store services featuring sustainable products in the nature of {specify types of products here, e.g., solar panels and modules, appliances made of sustainable and recyclable materials, clothing made of sustainable and recyclable materials, etc.}

 

Class 36:   Real estate services, namely, {specify nature of real estate services in Class 36 here, e.g., real estate agency services, real estate brokerage, real estate management services, real estate listing, real estate syndication, etc.}; capital investment services; E-commerce services, namely, {specify nature of e-commerce service in Class 36 here, e.g., providing a virtual currency for use by members of an on-line community via a global computer network, providing cryptocurrency transfer services, etc.}; consultation services in the field {specify nature of services in Class 36 here, e.g., cryptocurrency transfer services, digital asset and investment acquisition, etc.}

 

TMEP §1402.01.

 

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/or 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 must also respond to the additional requirements below.

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED

 

The application identifies goods and/or services that could be classified in at least 37 classes; however, applicant submitted fees sufficient for 2 classes ONLY.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

ADVISORY – MULTIPLE CLASS APPLICATION REQUIREMENTS FOR APPLICATIONS BASED ON SECTION 1(a) and (b)

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy requirements 1 and 2 for all goods and/or services identified, and requirements 1, 2, 3, 4, and 5 only for the goods and/or services currently in use in commerce:

 

(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 fees already paid (view the USPTO’s current fee schedule).

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class (for goods and/or services in use in commerce only).  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class (for goods and/or services in use in commerce only).  The current specimen is not acceptable for any international class. See Specimen Does Not Show Use in Commerce – Amendment Required, infra.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            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 (for goods and/or services in use in commerce only) 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).

 

See an overview of the requirements for a Sections 1(a) and 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

SPECIMEN DOES NOT SHOW USE IN COMMERCE – AMENDMENT REQUIRED

 

Registration is partially refused because the specimen does not show use in commerce of the applied-for mark with the identified services in Class 35.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i).  Specifically, the specimen fails to show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered.  In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016); In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.”  See 15 U.S.C. § 1127; 37 C.F.R. §2.56(b)(2). 

 

When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user.  In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)).  A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered.  In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014. 

 

To show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.”  In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).

 

In the present case, the specimen does not show a direct association between the mark and services. At no point in the specimen is it made clear that applicant provides any kind of retail store service, or any service relating to photovoltaic panel systems. Applicant’s specimen contains links to articles about sustainability and green energy and it describes applicant’s passion for green projects and products, but there’s no indication that applicant offers the products identified in the identification. The closest applicant gets to mentioning solar energy is this statement: “Our number one goal is to increase awareness around the need for a more sustainable future and create a more eco-conscious consumer base whether that be through converting homeowners to solar energy or cutting down an individual’s consumption of single-use plastic bottles.”  See Specimen at 3. Put simply, no consumer encountering applicant’s specimen would be able to create a direct association between applicant’s mark and its identified services. At best, consumers would understand applicant to promote and provide information regarding green technologies and lifestyles.

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of the response options above and instructions on how to satisfy them using the Trademark Electronic Application System (TEAS) response form, see the Specimen webpage.

 

ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS

 

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.  

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each requirement in this Office action. 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 requirements 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.

 

 

/Hunter Bayliss/

Examining Attorney

Law Office 113

571-272-6526

Hunter.Bayliss@USPTO.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 December 09, 2019 for

U.S. Trademark Application Serial No. 88598715

 

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. 

 

 

/Hunter Bayliss/

Examining Attorney

Law Office 113

571-272-6526

Hunter.Bayliss@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 December 09, 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.”