United States Patent and Trademark Office (USPTO)

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

 

 

PRIORITY ACTION

NON‑FINAL 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 18, 2019

 

NO CONFLICTING MARKS FOUND

The USPTO database of registered and pending marks have been searched and no conflicting registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012).  Trademark Manual of Examining Procedure § 704.02 (October 2018). 

Applicant must address issues shown below.  On December 18, 2019, the undersigned examining attorney and Margot V. Knab, Esq., discussed the issues below.  Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03.

PROCEDURAL REQUIREMENTS

AMEND & POSSIBLY RECLASSIFY LISTED SERVICES

As discussed, Applicant is advised that the description of services initially filed in International Class 36 is unacceptable as indefinite, vague and overly broad.  37 C.F.R. § 2.32(a)(6); TMEP §§ 1401.03, 1402.11.  Further clarification as to the field, nature, purpose and use of the services is required to ensure proper understanding and classification.  TMEP § 1402.01(a).  With respect to the identified “retail store services,” Applicant must amend this listing to include the field of the featured goods.  For the identified “rental and leasing of residential, commercial, and retail space,” classification is controlled by the nature of the space.  For example, the rental and leasing of advertising space is in International Class 35, the rental and leasing of shopping center space is in International Class 36, and the rental and leasing of garage space is in International Class 39.  See attached evidence of listings from the Trademark Manual of Acceptable Identifications of Goods and Services. 

As the above examples demonstrate, the listings are overly broad.  Depending on the amended listing or listings, the amended services may be in more than the listed international class.  TMEP §§ 1401.03, 1402.11.  If Applicant is seeking to use the mark in connection with more than the existing class, Applicant must amend the application by classifying the goods and services in the proper classes and paying any outstanding fees to add any additional classes, if necessary.  37 C.F.R. § 2.85; TMEP §§ 1401.03(b), 1401.04(b).  If Applicant does not add any additional classes, then Applicant must limit services to those within the existing number.  TMEP §§ 1401.02(a), 1401.04(b).

In addition, the identified “multi-purpose real estate development, namely residential, commercial, and retail spaces” is poorly worded and should be amended to “multi-purpose real estate development of residential, commercial, and retail spaces.”  

The USPTO has the discretion to determine the degree of particularity needed to describe goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 U.S.P.Q.2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 U.S.P.Q.2d 1541, 1543-44 (Fed. Cir. 2007)).

The following suggested revisions to the initial description of services are suggestions only.  New wording is capitalized and bold.  Reclassified and relocated wording is in bold lettering. 

Applicant may adopt the following framework to amend and classify the services, if appropriate:

International Class 35 (NOT AN ACTIVE “PAID-FOR” CLASS):

Retail store services FEATURING CLOTHING;

International Class 36:

Rental and leasing of retail SHOPPING CENTER space;

International Class 37 (NOT AN ACTIVE “PAID-FOR” CLASS):

Multi-purpose real estate development OF residential, commercial, and retail spaces.

TMEP §§ 1402.01, 1402.03.

Please note that while the identification of the above-identified services may be amended to clarify or limit the listed services, adding goods and services or broadening the scope of the listed services is not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06.  Any acceptable changes to the services will further limit scope, and once services are deleted, they cannot be reinserted.  TMEP § 1402.07(e).

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

ADVISORY REGARDING POSSIBLe INSUFFICIENT FEE

As noted above, Applicant must clarify the number of classes for which registration is sought.  The application identifies services that are classified in more than one international class; however Applicant paid the fee for only one class.  Proper classification determines the amount of total fees; a fee for each class is required.  37 C.F.R. § 2.86(a)(2); TMEP §§ 810.0l, 1401.04, 1401.04(b), 1403.01.

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for any additional classes. 

REQUIREMENTS SHOULD AN ADDITIONAL CLASS BE ADDED

For an application with more than one international class, an applicant must comply with both of the following requirements based on an intention to use the mark in commerce under Section 1(b) of the Trademark Act:

(1)        Applicant must list the services by their international class in consecutive numerical order, starting with the lowest numbered class; and

 

 (2)       Applicant must submit a filing fee for each international class of services not covered by the fee already paid (fee information can be viewed at the USPTO’s current fee schedule). 

 

37 C.F.R. § 2.86; see 37 C.F.R. §§ 2.32(a), 2.34(a)(3); TMEP §§ 810.01, 1403.01, 1403.02(c).

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

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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 non-final Office action.  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. 

Please contact the undersigned attorney with any additional questions. 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 respond timely.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If an 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 an 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 18, 2019 for

U.S. Trademark Application Serial No. 88619898

 

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. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 18, 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.”