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:  December 16, 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.

 

Summary of Issues that Applicant Must Address:

 

• Prior-Filed Application Advisory – Class 42
• Partial Refusal under Section 2(d) – Likelihood of Confusion – Classes 35 and 45
• Partial Identification of Services Requirement – Classes 35, 39, 41, 42, 45

 

PRIOR-FILED APPLICATION ADVISORY – CLASS 42

 

THIS POTENTIAL PARTIAL REFUSAL ADVISORY APPLIES TO CLASS 42 ONLY.

 

The filing date of pending U.S. Application Serial No. 79270361 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks for Class 42.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

PARTIAL REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION – CLASSES 35 AND 45

 

THIS PARTIAL REFUSAL APPLIES TO CLASSES 35 AND 45 ONLY, AND CLASS 37, IF THE APPLICABLE SERVICES ARE PROPERLY AMENDED TO CLASS 37.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4811622 and 5712293.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

The applied-for mark is “MCS” in standard character form.

 

The cited mark in U.S. Registration No. 4811622 is “MCS MEDICAL CONCIERGE SERVICE” in standard character form with “MEDICAL CONCIERGE SERVICE” disclaimed.

 

The cited mark in U.S. Registration No. 5712293 is “USA MCS” in stylized form with “USA” disclaimed.

 

Applicant’s mark is similar in overall commercial impression to each registrant’s mark under Section 2(d) of the Trademark Act.  Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Applicant’s applied-for mark “MCS” is sufficiently similar to each registrant’s mark, “MCS MEDICAL CONCIERGE SERVICE” and “USA MCS” to find a likelihood of confusion because the only difference in applicant’s mark is different stylization and the absence of descriptive wording, which does not obviate their similarity.  The wording “MCS” is dominant in each of the respective marks because wording is dominant over stylization and design elements, and because it is the only wording that is not disclaimed.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  The minor stylization of an oval carrier does not significantly distinguish applicant’s marks from the registered marks, nor does U.S. Registration No. 5712293’s minor design of a bird and stamp take away from the dominance of the wording “MCS’ in the mark which is also the element of the mark that is largest in size.

 

“MEDICAL CONCIERGE SERVICE” and “USA” are disclaimed in the registered marks, leaving the remaining wording “MCS”, which is identical to the entirety of the wording in the applied-for mark.  Accordingly, the marks are confusingly similar.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

As such, considered in their entireties, applicant’s and each registrant’s mark share a common dominant acronym and evoke a highly similar overall commercial impression which substantially outweighs the differences in additional descriptive wording and design.  Therefore, the marks are confusingly similar under Section 2(d) of the Trademark Act.

 

Relatedness of the Services

 

Applicant’s services are closely related to each registrant’s services under Section 2(d) of the Trademark Act.  The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The identified services in the applied-for mark are “Business services, namely, the retrieval, organization, summarization, and delivery of medical, insurance scholastic, employment and government records; provide records management services; providing mail services; providing printing and copy services; inventory management in the field of law firms, insurance companies and other corporate entities; preparation of printed material; management of office equipment; vendor management and negotiation services for the purpose of providing Business Processing Outsourcing solutions to law firms, insurance companies and other corporate entities; management and servicing of multi-function printers” in International Class 35, and “Providing court document filing services, litigation support services; and reception and concierge services” in International Class 45, in relevant part.

 

The identified services in U.S. Registration No. 4811622 are “concierge services for others comprising of scheduling appointments, organizing documents and files for appointments, arranging transportation to appointments” in International Class 45.

 

The identified services in U.S. Registration No. 5712293 are “providing maintenance and repair services in the field of commercial inkjet printers; customization of commercial inkjet printers for others” in International Class 37, in relevant part.

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). 

 

In this case, the application uses broad wording to describe concierge services, which presumably encompasses all services of the type described, including U.S. Registration No. 4811622’s more narrowly worded concierge services.  In addition, the application uses broad wording to describe management and servicing of multi-function printers, which presumably encompasses all services of the type described, including U.S. Registration No. 5712293’s more narrowly worded providing maintenance and repair services in the field of commercial inkjet printers and customization of commercial inkjet printers for others.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and each registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and each registrant’s services are related.

 

Here, applicant’s and each registrant’s identified services clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record.  Evidence attached herein from the following sources demonstrates that the same source commonly offers various concierge services together alongside various printer services:

 

-        Best Friend Errand offers various concierge services.  http://bestfrienderrand.com/office-concierge/

-        Capitol Concierge offers various concierge services. http://www.capitolconcierge.com/

-        Cartridge World offers various printer services. http://cartridgeworld.com/printer-repair/

-        Inova VIP 360 offers various concierge services. http://www.inovavip360.org/inova-concierge-medicine-2/

-        Laserline offers various printer services. http://amalaserline.com/

-        Xerox offers various printer services. http://www.managedprintservices.com/

 

The attached Internet evidence above establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function.  Thus, applicant’s and each registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Based on the analysis above, applicant’s services are closely related to each registrant’s services.

 

Section 2(d) Refusal Summary

 

In total, the parties’ marks are confusingly similar in overall commercial impression because applicant’s and each registrant’s mark share a common dominant acronym and evoke a highly similar overall commercial impression which substantially outweighs the differences in additional descriptive wording and design.  Applicant’s and each registrant’s services are commercially related and are available in the same trade channels because no party has restricted its channels of trade and as shown by the evidence.  Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the services.  Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

PARTIAL IDENTIFICATION OF SERVICES REQUIREMENT – CLASSES 35, 39, 41, 42, 45

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASSES 35, 39, 41, 42, AND 45 ONLY.

 

Several items in the wording in the identification of services are indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  For example, the type of vendor negotiation services needs to be specified in Class 35.  The nature of the technology services and electronic project management services in Class 42 needs specification.  Wording to clarify indefinite wording is indicated in the suggestions, below.

 

In Class 39, the wording “PIV” needs to be spelled out for grammatical clarity.  The spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  If this is short for “personal identity verification,” then the following wording is suggested in Class 45: “verification of personal identity as part of personal background investigations.”

 

Applicant has misclassified the following services.  The wording “paper supply services” is misclassified in Class 39.  This could be classified as “paper supply services in the nature of procurement, namely, purchasing paper for others” in Class 35.  “Parcel receiving services” is misclassified in Class 39.  This could be classified as “providing specialized mail management services in the nature of parcel receiving services” in Class 35.  “Court reporter services for depositions” is misclassified in Class 41.  This could be classified as “providing court reporter services for depositions” in Class 45.  “Providing summarization of deposition transcripts” is misclassified in Class 41.  This could be classified as “providing summarization of deposition transcripts, namely, abstracting services in the nature of summarizing information from deposition transcript records” in Class 35.  “Provide digital imaging services” is misclassified in Class 42.  This could be classified as “digital imaging services” in Class 41.

 

Additionally, applicant has provided the application fees for only 7 international classes.  Thus, not all international classes in the application are covered by the application fees.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Some of the wording in the identification of services 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.  In particular, the wording “management and servicing of multi-function printers” is overbroad and misclassified in Class 35.  This could encompass “servicing of multi-function printers, namely, installation, maintenance and repair of multi-function computer printers” in Class 37 or “management of multi-function printers, namely, remote monitoring of multi-function printers for others” in Class 42.  “Providing laboratory support services” is overbroad in Class 39.  This could also encompass “laboratory support services, namely, repair or maintenance of laboratory apparatus and instruments” in Class 37 and “laboratory support services, namely, rental of laboratory apparatus and instruments” in Class 42.  “Providing forklift services” is overbroad in Class 39.  This could also encompass “forklift services in the nature of repair of fork lift trucks; laboratory support services, namely, repair or maintenance of laboratory apparatus and instruments” in Class 37.

 

The identification for concierge services in International Class 45 is indefinite because it does not indicate the type of concierge service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing “hotel concierge services” or “personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs.”

 

Applicant must specify the nature of the concierge services being provided.  If applicant is providing concierge services in hotels, applicant may amend the identification to “hotel concierge services.”  If applicant is providing concierge services other than hotel concierge services, applicant must specify the type of service activity (e.g., making requested personal arrangements and reservations and providing customer-specific information to meet individual needs).  And if the services are rendered in a particular environment, applicant must specify the particular environment where the concierge services are rendered; e.g., apartment complex, business conference, shopping center, office building, and residential complex.

 

If applicant adopts the suggested amendment of the services, then applicant may amend the classification to any of the following International Classes: 35, 37, 38, 39, 40, 41, 42, 43 and/or 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  See a discussion of multiple-class application requirements, below.

 

Applicant may substitute the following wording, if accurate (the examining attorney’s suggested changes and additions are in bold font, items for applicant to clarify are in bold italics, and suggested items to remove have a line through them):

 

Class 35: Business {please specify the nature of the business services, e.g., records management} services, namely, the retrieval, organization, summarization, and delivery of medical, insurance scholastic, employment and government records; provide business records management; providing mail services, namely, {please specify the nature of the mail services, e.g., receiving and processing international and domestic mail for infusion into established postal services, providing specialized mail management services}; {please specify the nature of the services in the scope of Class 35, e.g., business management services being managing office functions in the nature of} providing printing and copy services for others; inventory management in the field of law firms, insurance companies and other corporate entities; business services, namely, preparation of printed material {please specify a Class 35 purpose, e.g., for mailing} for others; management of office equipment, namely, {please specify the nature of the management services, e.g., leasing and rental of office equipment}; vendor management and negotiation services for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; vendor negotiation services in the nature of {please specify the nature of the negotiation services, e.g., negotiation of commercial transactions with vendors for third parties} for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; management and servicing of multi-function printers; providing summarization of deposition transcripts, namely, {please clarify the summarization services, e.g., abstracting services in the nature of summarizing information from deposition transcript records}; providing specialized mail management services in the nature of parcel receiving services; paper supply services in the nature of procurement, namely, purchasing paper for others

 

Class 37: Servicing of multi-function printers, namely, installation, maintenance and repair of multi-function computer printers; forklift services in the nature of repair of fork lift trucks; laboratory support services, namely, repair or maintenance of laboratory apparatus and instruments

 

Class 38 is acceptable.

 

Class 39: Courier services in the nature of parcel shipping and receiving services; {please specify the nature of the services, e.g., supply chain logistics and reverse logistics services,} namely, packaging, collection, and transportation of hazardous material for others by air, rail, ship or truck; providing laboratory support services, namely, {please specify a Class 39 service, e.g., warehousing of laboratory equipment}; providing warehouse storage services and support; providing forklift and PIV services in the nature of rental of fork lifts; providing courier delivery services; paper supply services

 

Class 40: Providing printing services

 

Class 41: Proving court reporter and videography services for depositions; providing translation services; providing language interpreter services; providing summarization of deposition transcripts; digital imaging services

 

Class 42: Providing technology services, namely, {please specify the nature of the services, e.g., providing temporary use of on-line non-downloadable software for} managing e-discovery;, providing technology services in the nature of hosting document review, namely, {please specify the nature of the hosting services, e.g., hosting an online website for document review}; provide digital imaging services; trial technology services, namely, {please specify the nature of the trial technology services, e.g., help desk services for computer trial technology}; and electronic project management services, namely, {please specify the nature of the electronic project management services, e.g., computer project management services}; management of multi-function printers, namely, remote monitoring of multi-function printers for others; laboratory support services, namely, rental of laboratory apparatus and instruments

 

Class 43 is acceptable.

 

Class 45: {please clarify the nature of the services, e.g., Public document filing services}, namely, providing court document filing services;, litigation support services; and {please specify the nature of the reception services, e.g., front desk} reception and concierge services for others comprising {please specify the nature of the concierge services, e.g., making requested personal arrangements and reservations and providing customer-specific information to meet individual needs rendered together in a {indicate environment, e.g., apartment complex, business conference, shopping center}}; providing court reporter services for depositions; verification of personal identity as part of personal background investigations

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted.  See TMEP §1402.07(e).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

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

 

(1)       List the 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).  Specifically, the application identifies services based on use in commerce that are classified in at least 9 classes; however, applicant submitted a fees sufficient for only 7 classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

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

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for classes 35, 38, 39, 40, 41, 42, 43, and 45; and applicant needs a specimen for class 37, if added.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirement 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. 

 

Failure to Respond to Office Action with Partial Refusals/Requirements – Abandonment of Classes Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following classes of services will be deleted from the application: Classes 35, 39, 41, 42, and 45.  The application will then proceed with the following classes services only: Classes 38 and 43.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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 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.    

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 December 16, 2019 for

U.S. Trademark Application Serial No. 88614666

 

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. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 16, 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.”