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 22, 2019

 

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).

 

SUMMARY OF ISSUES

·       REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES

• REQUIREMENT – PARTICULAR GOODS/SERVICES EXCEED SCOPE OF FOREIGN REGISTRATION

 

Applicant must clarify some of the wording in the identification of goods and/or services because it is indefinite and/or overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the exact nature of the goods and/or services. In addition, some of the goods and/or services appear to be misclassified.

 

Applicant must correct 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).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

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. 

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Applicant has included the term “and/or” or “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a). An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. The suggested amendment below substitutes in the definite wording “and” where the indefinite “and/or” or “or” appears.

 

Applicant included the wording “including”. Pursuant to TMEP 1402.03(a), the terms "including," "comprising," "such as," "and the like," "and similar goods," "products," "concepts," "like services" and other indefinite terms and phrases are almost always unacceptable. Consequently, the wording “including” has been deleted and replaced by "namely," "consisting of," "particularly," or "in particular".

 

Applicant included the wording “in this class”. Pursuant to TMEP 1402.01, wording such as "included in this class" is not the common name of particular goods or services and would not be understood by those unfamiliar with the Nice Classification. If an identification includes wording such as "included in this class," "belonging in this class," or "excluding goods/services in other classes," or the like, the examining attorney will require the applicant to delete such wording because it does not identify a particular good or service. Consequently, the wording “in this class” is deleted.

 

Applicant included the wording “leasing access time to a computer database”. Pursuant to the Identification Manual, this language is not to be used as it is confusing content and access providers. Therefore, the wording “leasing access time to a computer database” has been deleted.

 

The wording “computer software”, “computer programs”, and “software applications” in the identification of goods and/or services is indefinite and overly broad. Such wording is indefinite because it does not make clear the exact nature of the goods and/or services. For example, under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods in International Class 9. The wording “software” is overly broad because it is unclear whether the applicant is offering goods in the nature of downloadable software in International Class 9, or whether the applicant is offering services in the nature of website hosting in International Class 42.

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: “___ {indicate type of routers, e.g., wireless, network} Routers; recorded media in the nature of ___ {indicate particular goods, e.g., video magazine recorded on electronic media featuring finance} and downloadable media in the nature of downloadable audio files featuring finance as digital media,; blank digital recording in the nature of blank digital record disks, or blank analogue recording in the nature of blank analogue record disks, and storage media calculators; downloadable electronic publications in the nature of ___ {indicate specific nature of publication, e.g., magazines} in the field of ___ {indicate subject matter of publication, e.g., finance}; downloadable mobile software applications for ___ {indicate function of software, e.g., managing bank accounts, editing photos}; integrated software packages for human resource management, payroll, financial asset management, financial reporting, workforce management, talent management; electronic interfaces, namely, __ {indicate particular goods, e.g., electronic display interfaces}; ___ {indicate type of software, e.g., downloadable, recorded} computer software for use as electronic mail boxes; computer software packages comprised of downloadable application software for managing finances; ___ {indicate type of software, e.g., downloadable, recorded} computer software for use as computer databases; Computers; ___ {indicate type of software, e.g., downloadable, recorded} computer software for ___ {specify the function of the software, e.g., use as a spreadsheet, word processing}; ___ {indicate type of software, e.g., downloadable, recorded} computer programs for ___ {specify the function of the software, e.g., use as a spreadsheet, word processing}; computer hardware; computer peripherals; computer-based communications and terminal equipment, namely, ___ {indicate particular goods, e.g., communications computers}; apparatus and instruments for recording, transmitting, reproducing orand processing sound, images orand data in the nature of apparatus for recording, transmitting and reproducing sound and images; calculating machines; data processing equipment; magnetic tapes, namely, ___ {indicate particular goods, e.g., blank magnetic computer tapes}; blank magnetic discs; magnetic data carriers, namely, ___ {indicate particular goods, e.g., blank magnetic data carriers, pre-recorded magnetic data carriers featuring finance}; information storage devices, namely, ___ {indicate particular goods, e.g., USB (universal serial bus) hardware for information storage, external computer hard drive being computer information storage device}; CD-ROMs for sound or video recording”

 

Class 35: “Advertising; business management; business administration; providing office functions; business management and administration services in respect of financial services; business ___ {indicate type of business services, e.g., marketing, development, consultation} services relating to finance, valuation, loans, mortgages, insurance, capital management, brokerage, banking, capital investments and real estate affairs; accounting; forensic accounting; management accounting; providing business information on benchmarking as (evaluation of business organisation practices); business data analysis services; business appraisals; business development services; business feasibility studies; business merger services in the nature of business merger consultation; business modelling services; business negotiations of business contracts for others; business planning; business recruitment consultancy; business research; business statistical data analysis; business efficiency or process auditing for (examining, reviewing or assessing the working of a business or organization); preparation of business reports; preparation of documents relating to business, namely, ___ {indicate particular services, e.g., preparation of business reports relating to business}; processing of business survey results; providing information, including online, about advertising and office functions, namely, providing a searchable online advertising informational guide featuring the goods and services of other vendors via the internet in the field of __ {indicate field or type of goods or services, e.g., financial software}; strategic business planning; tax advisory services as (business management and accountancy services); book-keeping; marketing consultancy; planning of marketing strategies; business strategy services, namely, ___ {indicate particular services, e.g., business strategy development services}; auditing of accounts; preparation of accounts, namely, accounts receivable billing services; consultancy relating to public relations; business administration services; administration and management services in this class; advisory services relating to customer service, namely, ___ {indicate particular services, e.g., advisory services with regard to customer analysis}; dissemination of computer software, namely, ___ {indicate services, e.g., distribution of recorded computer shareware software samples for publicity purposes, distribution of recorded computer shareware software for advertising purposes}; advisory services relating to business risk management; electronic data processing in the field of ___ {specify field or industry, e.g., payroll} not including payment or claims processing; database management; compilation of information into computer databases; compilation of business data; commercial information services provided by access via the internet to a computer database; ___ {indicate type of information services, e.g., employee relations} information services, business  advisory services and ___ {indicate type of consultancy services, e.g., professional business, business organization} consultancy services in relation to all of the aforementioned”

 

Class 36: “Insurance, namely, ___ {indicate type of insurance services, e.g., insurance brokerage, insurance information}; financial affairs, namely, financial management services; monetary affairs, namely, providing financial analysis services; financial services, namely, ___ {indicate particular services, e.g., debt settlement, conducting an online exchange of interest rate products via the internet and intranet systems}; provision of financial information, in particular including, provision of financial information in respect to securities, financial markets, share prices, financial trading, financial indices, commodities, and in particular including, provision of on-line financial information on-line and provision of financial information through computer networks; financial analysis; financial consultancy; financial management; electronic financial trading services; financial reporting, namely, ___ {indicate particular services, e.g., financial credit reporting services}; financial risk management; administrative services relating to investments, namely, investment administration as annuity services; financial modelling services; financial portfolio management; ___ {indicate type of information services, e.g., foreign exchange, share price} information services, ___ {indicate type of advisory services, e.g., real estate investment trust, venture capital} advisory services and ___ {indicate type of consultancy services, e.g., investment, insurance} consultancy services in relation to all of the aforementioned; electronic data processing of insurance claims and payment data”

 

Class 37: “technical support services, namely, technical advice related to the installation of ___ {indicate goods being installed, e.g., computer hardware}; technical support services, namely, troubleshooting in the nature of the repair of computer hardware”

 

Class 38: “Telecommunications, namely, ___ {indicate particular services, e.g., ISDN services, providing advanced calling features}; providing user access to global computer networks and global communications networks, in particular, including providing user access to global computer networks and global communications networks for the transfer and dissemination of financial information; providing on-line access to publications, namely, providing a website featuring technology that enables users to access publications online; leasing access time to a computer database; providing user access to global communications computer networks which allow real-time interaction between users; providing technical infrastructure and network to allow on-line transactions; provision of access to electronic messaging systems; electronic transmission of messages; electronic message services; providing access to databases; internet portal services for (providing user access to a global computer network); information transmission services via digital networks, advisory services relating to telecommunications and telecommunications consultancy services in relation to all of the aforementioned”

 

Class 41: “Education, namely, conducting classes, seminars, conferences, and workshops in the field of finance; providing of training in the field of ___ {indicate field or subject matter, e.g., information technology, business management, financial analysis}; computer training, namely, ___ {indicate particular services, e.g., computer education training, computer training in the use of computers}; arranging and conducting of seminars and professional training workshops in the field of ___ {indicate specific field, e.g., business development}; consultancy services relating to ___ {specify, e.g., business} training; instruction services in the field of ___ {indicate specific field, e.g., finance}; book publishing of training materials; information services in the nature of ___ {indicate particular services, e.g., providing information relating to education services}, advisory services in the nature of ___ {indicate particular services, e.g., providing advice in the field of educational and entertainment activities and events for children} and ___ {indicate type of consultancy services, e.g., business training} consultancy services in relation to all of the aforementioned”

 

Class 42: “Scientific and technological services, namely, ___ {specify type of services, e.g., scientific research, analysis, testing} in the field of ___ {indicate field or subject matter, e.g., physics}, and ___ {indicate type of research, e.g., physics, bacteriology} research and ___ {indicate type of design, e.g., computer networking hardware, computer datacenter architecture} design relating thereto; design and development of computer hardware and software; computer technology support services, namely, help desk services; technical support services, namely, ___ {indicate particular services, e.g., troubleshooting of computer software problems, migration of datacenter, server and database applications}; design, development, maintenance and updating of computer software, firmware and hardware in the nature of ___ {indicate particular services, e.g., design and development of computer software for database management}; rental of computer software; computer rental; computer software programming of software for ___ {indicate subject matter, e.g., finance}; design of computer databases; hosting of databases; software as a service (SaaS) services featuring software for ___ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet}; platform as a service (PaaS) featuring computer software platforms for ___ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet}; computer programming; providing temporary useprovision of online non-downloadable software for ___ {specify the function of the program, e.g., for use in database management, for use as a spreadsheet}; providing temporary use of online non-downloadable software for use in software creation; information technology (IT) services for (computer hardware, software and peripherals design and technical consultancy), namely, on-site information technology management of computer information technology systems of others as information technology computer services; ___ {indicate type of information services, e.g., weather} information services, advisory services relating to computer software and consultancy services being ___ {indicate particular services, e.g., consulting services in the field of cloud computing} in relation to all of the aforementioned; computer software, namely, providing temporary use of on-line non-downloadable software for ___ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet}; computer programs, namely, providing temporary use of on-line non-downloadable computer program software for ___ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet}; software applications, namely, providing temporary use of a non-downloadable web software application for ___ {indicate the function of web-based software application, e.g., time management, sharing web-based documents}; computer software packages, namely, updating of computer software packages; electronic video data processing, namely, interpreting electronic video content and identifying segments that contain predefined key events; providing technical infrastructure and network to allow on-line transactions, namely, hosting a technical server on a global computer network for the purpose of facilitating e-commerce on-line transactions via such a server”

 

See TMEP §§1402.01, 1402.03.

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.

 

Advisory – Multiple Class Application

 

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 Sections 1(b) and 44:

 

(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 are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 6 class(es). 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

REQUIREMENT – PARTICULAR GOODS/SERVICES EXCEED SCOPE OF FOREIGN REGISTRATION

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods and/or services as follows in International Class 9: “calculating machines”.  However, the foreign registration identifies the following goods and/or services: “calculators”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because “data processing apparatus” could constitute “calculating machines”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 9: “electronic interfaces”, “electronic mail boxes”, and “computer databases”. However, the foreign registration identifies the following goods and/or services: “computer software”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because “electronic interfaces”, “electronic mail boxes”, and “computer databases” could constitute “downloadable software platform for electronic interfaces”, “downloadable software platform for electronic mail boxes”, and “downloadable software platform for computer databases”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 9: “recorded and downloadable media, blank digital or analogue recording” and “downloadable publications”. However, the foreign registration identifies the following goods and/or services: “computer software”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for goods could encompass physical goods such as “prerecorded video cassettes featuring music”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 36: “insurance”. However, the foreign registration identifies the following goods and/or services: “financial services”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could encompass services such as “tracking and monitoring insurance compliance for business purposes”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 36: “information, advisory, and consultancy services in relation to all of the aforementioned”. However, the foreign registration identifies the following goods and/or services: “financial services”.   These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be in other fields such as
“business”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 38: “telecommunications”. However, the foreign registration identifies the following goods and/or services: “providing access to global computer networks and global communications networks, including providing access to global computer networks and global communications networks for the transfer and dissemination of financial information”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be “transfer of data by telecommunications”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 38: “provision of access to electronic messaging systems”. However, the foreign registration identifies the following goods and/or services: “providing access to global computer networks and global communications networks, including providing access to global computer networks and global communications networks for the transfer and dissemination of financial information”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be “electronic store-and-forward messaging”.

The U.S. application identifies the particular goods and/or services as follows in International Class 38: “providing access to databases”. However, the foreign registration identifies the following goods and/or services: “providing access to global computer networks and global communications networks, including providing access to global computer networks and global communications networks for the transfer and dissemination of financial information”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be “providing access to databases” through other mechanisms than “to global computer networks and global communication networks, including providing access to global computer networks and global communications networks for the transfer and dissemination of financial information”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 38: “internet portal services (providing user access to a global computer network)”. However, the foreign registration identifies the following goods and/or services: “providing access to global computer networks and global communications networks, including providing access to global computer networks and global communications networks for the transfer and dissemination of financial information”. These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be “providing internet portal services” through other mechanisms than “to global computer networks and global communication networks, including providing access to global computer networks and global communications networks for the transfer and dissemination of financial information”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 38: “information, advisory, and consultancy services in relation to all of the aforementioned”. However, the foreign registration identifies the following goods and/or services: “financial services”.   These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be in other fields such as
“business”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 41: “information, advisory and consultancy services in relation to all of the aforementioned”. However, the foreign registration identifies the following goods and/or services: “financial services”.   These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be in other fields such as
“business”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 42: “information, advisory and consultancy services in relation to all of the aforementioned”. However, the foreign registration identifies the following goods and/or services: “financial services”.   These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be in other fields such as
“business”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 35: “information, advisory and consultancy services in relation to all of the aforementioned”. However, the foreign registration identifies the following goods and/or services: “financial services”.   These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the applied-for services could be in other fields such as
“finance”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 35: “Advertising; business management; business administration; office functions; business management and administration services in respect of financial services; business services relating to finance, valuation, loans, mortgages, insurance, capital management, brokerage, banking, capital investments and real estate affairs; accounting; forensic accounting; management accounting; benchmarking (evaluation of business organisation practices); business analysis services; business appraisals; business development services; business feasibility studies; business merger services; business modelling services; business negotiations; business planning; business recruitment consultancy; business research; business statistical analysis; efficiency or process auditing (examining, reviewing or assessing the working of a business or organization); preparation of business reports; preparation of documents relating to business; processing of business survey results; providing information, including online, about advertising and office functions; strategic business planning; tax services (business management and accountancy services); book-keeping; marketing consultancy; planning of marketing strategies; business strategy services; auditing of accounts; preparation of accounts; consultancy relating to public relations; business administration services; administration and management services in this class; advisory services relating to customer service; dissemination of computer software; advisory services relating to business risk management; electronic data processing; database management; compilation of information into computer databases; compilation of business data; commercial information services provided by access to a computer database”.

 

The U.S. application identifies the particular goods and/or services as follows in International Class 38: “electronic transmission of messages” and “electronic message services”. The U.S. application identifies the particular goods and/or services as follows in International Class 41: “Education; providing of training; computer training; arranging and conducting of seminars and training workshops; consultancy services relating to training; instruction services; publishing of training materials”. The U.S. application identifies the particular goods and/or services as follows in International Class 42: “Scientific and technological services and research and design relating thereto; design and development of computer hardware and software” and “firmware and hardware; rental of computer software; computer rental; programming of software; design of computer databases; hosting of databases; software as a service (SaaS); platform as a service (PaaS); computer programming; provision of online non-downloadable software; software creation; information technology (IT) services (computer hardware, software and peripherals design and technical consultancy)”.

 

However, this identification is completely different from any goods and/or services in the foreign registration and thus exceeds the scope of, the goods and/or services in the foreign registration upon which the U.S. application relies for the Section 44(e) filing basis. See 15 U.S.C. §1126; 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b). For the goods and/or services in a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). Applicant may respond by deleting the Section 44(e) basis and relying solely on the Section 1 basis for those goods and/or services.  See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04.

 

Thus, these goods and/or services in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)           Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)           Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

CONCLUSION

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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  

 

 

/Xu, Elaine/

Trademark Examining Attorney

Law Office 128

(571) 270-5297

elaine.xu@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 22, 2019 for

U.S. Trademark Application Serial No. 88606603

 

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. 

 

 

/Xu, Elaine/

Trademark Examining Attorney

Law Office 128

(571) 270-5297

elaine.xu@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 22, 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.”