| To: | Solutions Organization, LLC (pto@egsllp.com) |
| Subject: | U.S. Trademark Application Serial No. 88633490 - 16706.007 |
| Sent: | January 24, 2020 03:47:35 PM |
| Sent As: | ecom127@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88633490
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Correspondence Address: ELLENOFF GROSSMAN & SCHOLE LLP
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Applicant: Solutions Organization, LLC
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Reference/Docket No. 16706.007
Correspondence Email Address: |
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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: January 24, 2020
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.
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).
CLASSIFICATION AND IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
Applicant has classified “spaces”, “buildings, “home décor”, “floorplans” and “venues” in International Class 9; however, the proper classification for each item is as provided below. Therefore, applicant may respond by (1) adding one or more classes to the application and reclassifying these items in the proper international class, (2) deleting these items from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified items in the proper international class. 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 requirements specified in this Office action.
For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first. See id. Generally, a kit is classified in the same international class as the majority of the components in the kit. See id. For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).
If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit. See id. For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).
For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].” See id. Generally, this type of kit is classified in the international class of the product being made. For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).
For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
Applicant must clarify the wording “display units” in the identification of goods in International Class 9 because it is indefinite and too 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 what types of display units encompassed here, e.g., electronic LCD display unit with multi-networking (TCP/IP) capabilities or digital taxi top advertising display units. Further, this wording could identify goods in more than one international class. For example, electronic LCD display units are in Class 9 and retail display units are in Class 15.
Applicant must clarify the wording “spaces” in the identification of goods and services because it is indefinite and too 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 what the services are. Further, this wording could identify services in more than one international class. For example, rental of advertising spaces are in Class 35, reservation of parking spaces are in Class 39, and rental of server memory space in Class 42.
Applicant must clarify the wording “buildings” in the identification of goods and services because it is indefinite and too 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 what the services are. Further, this wording could identify services in more than one international class. For example, renting of buildings is in Class 36 and construction of buildings is in Class 37.
Applicant must clarify the wording “outdoor installations” in the identification of goods in International Class 9 because it is indefinite and too 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 what types of installations encompassed here, e.g., security lights for outdoor use or LED lighting controls for outdoor lighting fixtures. Further, this wording could identify goods in more than one international class. For example, LED lighting controls for outdoor lighting fixtures are in Class 9 and LED lighting fixtures for indoor and outdoor lighting applications are in Class 11.
Applicant must clarify the wording “home décor” in the identification of goods and services because it is indefinite and too 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 what the specific goods or services are. Further, this wording could identify goods and services in more than one international class. For example, decals and stickers for use as home décor are in Class 16 and retail store services in the field of home décor are in Class 35.
Applicant must clarify the wording “floorplans” in the identification of goods and services because it is indefinite and too 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 what the specific goods or services are. Further, this wording could identify goods and services in more than one international class. For example, floorplans for building construction are in Class 16 and drafting of construction floorplans for recreation premises are in Class 42.
The identification for “computer game . . . programs and software”, “video game software, video game programs”, “virtual reality game software” in International Class 9 is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is an entertainment service in International Class 41. See TMEP §1402.03(d). The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant must clarify the wording “interactive video games of virtual reality comprised of computer hardware and software” in International Class 9 is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Pursuant to the USPTO’s online searchable ID Manual, this wording is no longer unacceptable. Downloadable and recorded goods are in International Class 9, whereas all game apparatus are in Class 28, and providing their temporary, online non-downloadable use is an entertainment service in International Class 41. See TMEP §1402.03(d).
The identification for “computer software for processing video images and sound and projecting video images and sound, and hardware” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d). In addition, the identification does not specify if these goods are sold as a unit.
The wording “input devices” in the identification of goods is indefinite and must be clarified because it does not make clear what type of devices are encompassed here, e.g., track ball input devices or input devices for computers. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “game consoles” in the identification of goods is indefinite and must be clarified because it does not make clear what type of game consoles are encompassed here, e.g., video game consoles and handheld game consoles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “venues” in the identification of goods and services is indefinite and must be clarified because it does not make clear what type of services are encompassed here, e.g., rental of performance venues or consultation regarding rental of recording studios and venues in Class 41. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “downloadable wireless game software” in the identification of goods is indefinite and must be clarified because it does not make clear what type of game software is encompassed here, e.g., downloadable electronic game software for wireless devices or downloadable computer game software via a global computer network and wireless devices. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “downloadable wireless entertainment via the internet and wireless devices, namely, . . . . computer wallpaper” in the identification of goods is indefinite and must be clarified because it does not make clear what the goods are, e.g., downloadable image files or downloadable photographs. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “interactive multimedia computer game program” and “Computer application software for mobile phones, tablets or other mobile devices, namely, software for controlling devices that enhance or amplify ambient sounds or mask noise” in the identification of goods is indefinite and must be clarified because it does specify the format, i.e., downloadable or recorded. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.
The wording “interactive video game programs” in the identification of goods is indefinite and must be clarified because it does specify the format, i.e., downloadable or recorded. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods, the wording “interactive” is no longer acceptable for video game programs.
The wording “computer CPUs” in the identification of goods is indefinite and must be clarified because it does specify what the CPUs stands for, i.e., central processing units. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Providing an online platform, namely, providing a website and creating an on-line community where users can upload and share images and audiovisual recordings, share games, projects, and software applications, and exchange messages with other users” in the identification of goods is indefinite and must be clarified because it does specify that a website features a technology that enables users to share images and projects, or that on-line community is for registered users. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “entertainment in the nature of a live musical performer” in the identification of goods is indefinite and must be clarified because it does specify the type of performance, e.g., live vocal performances or live musical performances. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “entertainment in the nature of live traveling tours by a musical entertainer” in the identification of goods is indefinite and must be clarified because it does specify the nature of the service, e.g., music performances or guided eco tours. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “entertainment services, namely, providing prerecorded music, all online via a global computer network” in the identification of services is indefinite and must be clarified because it does specify that the prerecorded music is not downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Therefore, applicant must delete “retailing” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring music related items, clothing and accessories therefor, printed promotional matter such as posters, books and publications, novelty items and ornaments,” “wholesale distributorships featuring music related items, clothing and accessories therefor, printed promotional matter such as posters, books and publications, novelty items and ornaments,” and “on-line wholesale and retail store services featuring music related items, clothing and accessories therefor, printed promotional matter such as posters, books and publications, novelty items and ornaments.”
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may substitute the following wording, if accurate (the examining attorney’s suggestions appear in bold font):
Class 9: Apparatus for recording and reproduction of sound, images, or data sold as integral components of kits for building computers; a kit comprising primarily of {identify goods in Class 9, e.g., Light emitting diodes (LEDs), LED light controls} that allows users to assemble a pixel board, namely, a board composed of LED lights that may be controlled and operated by the user; mobile phones; smartphone; {identify type of players in Class 9, e.g., MP3, MP4, compact disc} music players; input devices {identify type or use of devices in Class 9, e.g., for computers, for computer hardware and electronic instruments, namely, jog wheels, being track ball input devices}; instruments in the nature of {identify instruments in Class 9, e.g., electric navigational instruments, electronic instruments for use in remote inspection and measurement of industrial components using remote visual devices, electronic instruments being logic analyzers}; {identify type of keyboards in Class 9, e.g., computer, smartphone} keyboards; display units in the nature of {identify the goods in Class 9, e.g., electronic LCD display unit with multi-networking (TCP/IP) capabilities, digital taxi top advertising display units}; microphones; audio reproduction devices; outdoor installations being {identify goods in Class 9, e.g., security lights for outdoor use, LED lighting controls for outdoor lighting fixtures}; Computers; computer hardware; electronic components for computers; computer peripherals; kits for building computers comprising primarily of computer hardware components, computer operating software, electronic components for computers, and computer peripherals; Musical sound recordings; audio-visual recordings, namely, compact discs, phonograph records, CD-ROMs, DVDs and downloadable MP3 files all featuring music and sound tracks; downloadable musical sound recordings; downloadable video recordings featuring music; downloadable electronic publications in the nature of books, booklets, magazines, journals, manuals, brochures, leaflets, pamphlets and newsletters, all in the field of music, entertainment, television, film, the arts, fashion, lifestyles, culture, social issues and politics; electronic publications, namely, books, booklets, magazines, journals, manuals, brochures, leaflets, pamphlets and newsletters, all in the field of music, entertainment, television, film, the arts, fashion, lifestyles, culture, social issues and politics, recorded on CD-ROMs; magnets; decorative magnets; refrigerator magnets; novelty magnets; mouse pads; compact disc cases and covers in the nature of sleeves; faceplates for cell phones; jackets for computer discs; fitted cases for storage and transportation, namely, cases for compact discs, DVDs, CD-ROMs, computers, cameras, camcorders and portable phones; computer carrying cases; wrist rests and supports for computer mouse users; wrist rests for use with computers and computer accessories; computer keyboard wrist pads; downloadable music, ring tones, graphics, and electronic games via the Internet and wireless devices; downloadable wireless game software in the nature of {identify type of software on Class 9, e.g., downloadable electronic game software for wireless devices or downloadable computer game software via a global computer network and wireless devices}; downloadable wireless entertainment via the internet and wireless devices, namely, ring tones, images featuring graphics and photographs, and {identify type of goods in Class 9, e.g., image files, photographs} featuring computer wallpaper; downloadable screen saver software, via the internet and wireless devices; computer game discs, {specify whether downloadable or recorded} computer game programs and software; video game discs, {specify whether downloadable or recorded} video game software, {specify whether downloadable or recorded} video game programs; {specify whether downloadable or recorded} interactive multimedia computer game program; {specify whether downloadable or recorded} video game programs; interactive audio game discs containing action games and role playing games; {specify whether downloadable or recorded} video games of virtual reality comprised of computer software; {specify whether downloadable or recorded} virtual reality game software; multi-media software recorded on CD-ROM featuring music, games and entertainment in the nature of motion pictures, music videos, films and television series, programs and shows featuring cartoon and animation, adventure, comedy, drama, music, games, sports, live-action in the nature of football, baseball, basketball and tennis games and cinematography and videography that does not use animation and that combines both animated characters and humans, artists, entertainers, the arts, namely, dramatic acts and dance, pop culture, pre-recorded live concert footage of audio, visual and dramatic performances; {specify whether downloadable or recorded} computer software for use in the design, development and execution of wireless game and entertainment programs and applications; electric and electronic apparatus and appliances, for analog, digital or optical receiving, processing, reproduction, control, amplification or distribution of light, sound or image signals, namely, radios, radio receivers, players and recorders for CDs and MP3 files, compact disc players, DVD players, loud speaker systems, power transformers for amplification, loudspeakers, headphones, earphones and remote controls therefor; radio receivers; radios for automobiles; amplifiers; loudspeakers; loudspeakers with built-in amplifiers; digital audio players for music; audio equipment containing amplifiers, namely, stereo tuners and loudspeakers containing amplifiers; digital audio and video recorders and players; audiovisual equipment for vehicles, namely, stereos, speakers, DVD players, digital audio and video players; remote controls for radios, radio receivers, players and recorders for CDs and MP3 files, compact disc players, DVD players, loud speaker systems; cables for electrical or optical signal transmission; electronic control units comprised of electrical controllers for regulation of sound signals; {specify whether downloadable or recorded} software for the remote control of lamps and other lighting devices, digital audio and video recorders and players; telecommunication equipment, namely, telecommunication cables, telecommunication exchangers, telecommunication switches; telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols, telecommunications transmitters; electric and electronic apparatus and appliances for data processing and for input, output and storage of data, namely, central processing units for processing information, data, sound or images; {specify whether downloadable or recorded} computer software for use in database management and for managing the download and storage of audio and video files; disc storage containers; {specify whether downloadable or recorded} software for electric and electronic apparatus and appliances, namely, software to control and improve audio equipment sound quality; downloadable software for the uploading and downloading of digital files such as music files from a database to personal computer, MP3 players and mobile telephones; {specify whether downloadable or recorded} software for use in linking audio and video equipment with parts of the audio and video equipment; Home theater and entertainment systems comprised of projection screens, video monitors, video projectors, sound projectors and amplifiers, computer central processing units (CPUs), audio amplifiers, audio speakers; sound systems comprised of sound projectors and amplifiers, computer central processing units (CPUs), audio amplifiers, audio speakers; projection screens; electronics and related accessories, namely, projection screens, video monitors, video projectors, sound projectors and amplifiers, computer central processing units (CPUs), audio amplifiers, audio speakers; recorded computer software for processing video images and sound and projecting video images and sound, and hardware sold as a unit; Batteries and battery chargers; Eyeglass frames; Eyeglass lenses; Eyeglasses; Headphones; Headsets for mobile telephones; Mounts and mounting brackets adapted for audio speakers with swiveling bases therefor; Remote controls for audio or video products, namely, audio speakers, amplifiers, receivers, CD players, MP3 players, audio or video streaming devices, televisions, videocassette players, DVD players, or digital video recorders; Stands adapted for stereos and audio speakers; Sunglasses; Audio amplifiers; Communications headsets for use with communication radios, intercom systems, or other communications network transceivers; Downloadable computer application software for mobile phones, tablets or other mobile devices, namely, software for controlling devices that enhance or amplify ambient sounds; Lenses for sunglasses; Protective cases for audio equipment in the nature of loudspeakers and headphones; Signal processors for audio speakers; Mounts and mounting brackets adapted for audio speakers; Stands adapted for audio speakers; Protective cases and covers for loudspeakers and headphones; {specify whether downloadable or recorded} computer application software for mobile phones, tablets or other mobile devices, namely, software for controlling devices that enhance or amplify ambient sounds or mask noise; earphone accessories, namely, earphone cushions, earphone pads, and earphone extension cords; headphone accessories, namely, headphone cushions, headphone pads, and headphone extension cords
Class 11: outdoor installations being {identify goods in Class 11, e.g., lighting installations, portable urinals being sanitary installations for outdoor activities, LED lighting fixtures for indoor and outdoor lighting applications}
Class 15: musical instruments, namely, {identify instruments in Class 15, e.g., drums, bass guitars, electronic musical instruments}; {identify type of keyboards in Class 15, e.g., electronic musical, piano} keyboards
Class 16: Decals and stickers for use as home décor; floorplans for building construction for live music concerts
Class 20: display units being {identify the goods in Class 20, e.g., retail display units, furniture}
Class 28: {Identify the type of goods in Class 28, e.g., video, handheld} game consoles; video games of virtual reality comprised of computer hardware, namely, {identify type of goods in Class 28, e.g., video game interactive hand held remote controls for playing electronic games, video game interactive control floor pads or mats}
Class 35: {Identify services in Class 35, e.g., renting of advertising} spaces for visual and audio performances by a musical artist, live music concerts, personal appearances by a musician and entertainer, live and televised appearances by an artist and professional entertainer; retail store services in the field of home décor featuring a showroom for the goods of others in the field of home décor; on-line ordering services and on-line retail store services, electronic retail services via computers being computerized on-line retail store services, and retail store services available through computer communications, all of the aforesaid featuring music related items, clothing and accessories therefor, printed promotional matter such as posters, books and publications, novelty items and ornaments
Class 36: {Identify services in Class 36, e.g., leasing or renting of} buildings for live music concerts
Class 37: {Identify services in Class 37, e.g., construction of} buildings for live music concerts
Class 39: {Identify services in Class 39, e.g., reservation of parking} spaces for live music concerts
Class 41: Rental of facilities and equipment for musical productions, namely, performance venues, studios, sets, dressing rooms; providing temporary use of non-downloadable computer game programs and software; providing temporary use of non-downloadable computer game programs and software; providing temporary use of non-downloadable video games of virtual reality comprised of computer software; providing temporary use of non-downloadable virtual reality game software; Music composition and transcription for others; entertainment in the nature of {identify type of performance in Class 41, e.g., live vocal performances, live musical performances} by a live musical performer; entertainment in the nature of visual and audio performances by a musical artist; entertainment, namely, live music concerts; entertainment in the nature of live traveling tours in the nature of {identify the nature of service in Class 41, e.g., vocal musical performances, guided eco tours} by a musical entertainer; entertainment, namely, personal appearances by a musician and entertainer; entertainment services, namely, live and televised appearances by an artist and professional entertainer; entertainment services, namely, providing a web site featuring non-downloadable musical performances, musical videos, related film clips, and photographs; entertainment services, namely, providing non-downloadable prerecorded music, all online via a global computer network; entertainment services, namely, presenting non-downloadable pre-recorded music, video and graphics to mobile communications devices via a global computer network and wireless networks
Class 42: {Identify services in Class 42, e.g., rental of server memory} space for storing prerecorded music, non-downloadable musical performances, musical videos, related film clips, and photographs; drafting of construction floorplans for recreation premises for live music concerts; providing temporary use of online non-downloadable computer software for use in the design, development and execution of wireless game and entertainment programs and applications; providing temporary use of online non-downloadable software for the remote control of lamps and other lighting devices, digital audio and video recorders and players; providing temporary use of online non-downloadable computer software for use in database management and for managing the download and storage of audio and video files; providing temporary use of online non-downloadable computer software for processing video images and sound and projecting video images and sound; Providing an online platform, namely, providing a website featuring technology that enables users to and creating an on-line community for registered users to upload and share images and audiovisual recordings, share games, projects, and software applications, and exchange messages with other users
Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and 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 already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 12 (twelve) classes; however, applicant submitted a fee sufficient for only 1 (one) classes. 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
UNSIGNED APPLICATION
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
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 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.
/Maryna K. Gipsov/
Maryna K. Gipsov
Trademark Examining Attorney
Law Office 127
571-270-7630
maryna.koberidze@uspto.gov
RESPONSE GUIDANCE