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:  June 05, 2020

 

 

 

Upon further consideration and review, please note the following new requirement related to the recitation of services in Class 41.

 

PLEASE NOTE:  Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

RECITATION OF SERVICES

 

The identification of services is indefinite and must be clarified because the wording “providing ….. networking opportunities” in Class 41 is unacceptable in that it does not specify the type of networking opportunities and could include services in more than one International Class of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification 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.

 

Specifically, the wording “Providing educational services, namely, providing seminars, workshops, instruction, mentoring, classes, network opportunities and tutoring to high school students and recent graduates in the fields of job skills, career and educational opportunities, and business and professional development and distribution of related training and information materials” in Class 41 is partially indefinite and overly broad.  “Providing…network opportunities… in the fields of job skills, career and educational opportunities, and business and professional development” is ambiguous and is overly broad as it is not limited to educational services and may encompass services in multiple classes, e.g., Class 35 networking opportunities for employment, Class 45 social networking.   Applicant must clarify the services intended by the wording “network opportunities”.

 

Applicant may adopt the following wording, if accurate:

 

            Class 41

Providing educational services, namely, providing internships and career training opportunities to high school students and graduates in a variety of business and career fields; Providing educational services, namely, providing seminars, workshops, instruction, mentoring, classes, ___________ [applicant must specify the educational services intended by the wording “network opportunities” utilizing common commercial terms] and tutoring to high school students and recent graduates in the fields of job skills, career and educational opportunities, and business and professional development and distribution of related training and information materials; Career counseling, namely, providing advice, mentoring, seminars, workshops, and classes to high school students and recent graduates concerning education options for career development and career opportunity and distribution of training and information materials; Charitable services, namely, providing education services to students regarding career and education opportunities, in International Class 41.

 

TMEP section 1402.011.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@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.