Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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 28, 2020

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

Applicant must address issues shown below.  On January 27, 2020, the examining attorney and attorney Carissa Weiss discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

SUMMARY OF ISSUES:

• Identification and Classification of Services
• Multiple-Class Application Requirements

IDENTIFICATION AND CLASSIFICATION OF SERVICES

Applicant must clarify the identification of services because it contains wording that is indefinite and may identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The application must identify the services specifically to provide public notice and to enable the USPTO to classify the services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).  TMEP §1402.01.  The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the services covered by the mark.   Id.; In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007). 

In International Class 35, applicant must amend “Providing an interactive website on a global computer network for the purpose of facilitating e-commerce” to specify the means in which commerce is facilitated.  The wording “Providing an interactive website with a 3d interactive design configurator of residential and commercial properties” must be amended to clarify the nature of the services; the classification of services provided via a website will vary depending on the subject matter and/or functionality of the website.  For example, providing a website featuring technology that allows users to perform an activity is a technology services classified in International Class 42.  See U.S. Acceptable Identification of Goods and Services Manual, Entry No. 042-1713 and notes.

In International Class 36, applicant must amend “asset management” because it includes services for managing of financial and/or real estate assets in International Class 36 and industrial asset management in International Class 35.

In International Class 37, applicant must amend “Development services, namely, developing residential and commercial properties” to make explicit the kind “properties” that are developed.

Applicant may adopt the following amended wording, if accurate (changes in bold):

Class 035:       Providing an interactive real estate website that promotes housing and apartment properties, commercial office properties, retail properties, and residential and commercial mixed and single use buildings and complexes through offering prospective tenants and owners video walk throughs, property descriptions, text, price, location, maps and other information that would be influential to prospective tenants and owners in making rental and purchase decisions, and providing links to other websites that provide information related to modular and reconfigurable living spaces; on-line retail store services featuring a wide variety of consumer goods; promoting the goods and services of others by providing a web page featuring links to websites of others; promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail websites of others; Providing an interactive website on a global computer network for the purpose of facilitating e-commerce by connecting buyers with sellers via the interactive website; Project management services for others for business purposes in the fields of architecture, interior design, and urban planning design

Class 036:       Real estate services, namely, asset management being real estate management, rental, brokerage, leasing and property management of residential and commercial properties; providing an on-line interactive website featuring information in the field of real estate featuring commercial and residential properties using modular and reconfigurable living spaces

Class 037:       Real estate development and construction of commercial and residential property; Development services, namely, developing residential and commercial real estate properties; Construction services, namely, planning construction of residential and commercial properties

Class 042:       Providing an interactive website featuring technology that enables users to design residential and commercial real estate properties with an interactive 3d design configurator

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements set forth below.

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.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

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 Section 1(b):

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least four classes; however, applicant submitted fees sufficient for only three 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.

RESPONSE GUIDELINES

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

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.

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

QUESTIONS:

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(s) and/or requirement(s) 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.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.

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.  

 

·         /John LaMont/

·         Examining Attorney

·         Law Office 123

·         (571) 270-0404

·         john.lamont@uspto.gov

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 28, 2020 for

U.S. Trademark Application Serial No. 88634706

 

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. 

 

 

/John LaMont/

Examining Attorney

Law Office 123

(571) 270-0404

john.lamont@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 January 28, 2020, 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.”