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:  November 15, 2019

 

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action via examiner’s amendment.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment 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.

 

 

 

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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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).

 

 

SUMMARY OF ISSUES:

 

• DISCLAIMER REQUIRED
• IDENTIFICATION AND CLASSIFICATION OF SERVICES
• MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

 

 

DISCLAIMER REQUIRED

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “INTERNATIONAL OFFICE” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from http://hio.harvard.edu/about-us shows this wording is used in connection with a particular office that responds to the needs of the international community at Harvard University. Thus, the wording merely describes services by such office that pertain to individuals who travel internationally for educational purposes.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “INTERNATIONAL OFFICE” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES

The wording “Providing a website featuring information about immigration issues, namely, international travel and work permits, for educational purposes” in the identification of services for International Class 39 must be clarified because it is indefinite because the nature of the information about immigration issues is not adequately specified, and appears to be misclassified.    See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, applicant may amend this wording to the following, if accurate: “providing a website featuring legal information about immigration issues, namely, legal information about international travel and work permit rules and regulations for individuals who travel internationally for educational purposes” in Class 45.

 

The wording “providing educational services in the nature of social and cultural differences for international students studying in the US” in the identification of services in Class 39 is indefinite and must be clarified because it does not adequately identify the nature of the educational services, and appears to be misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The identification for educational services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars, analyzing educational test scores and data for others, or providing educational testing.  Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field, which in this case is limited by the wording “social and cultural differences for international students studying in the US.” Applicant may adopt the following wording, if accurate:  “providing educational services in the nature of classes, seminars, and workshops about social and cultural differences for international students studying in the US” in Class 41.

 

The wording “consulting services in the field of education, namely, providing advice and information to international college student studying in the US” in the identification of services in Class 39 is indefinite and must be clarified because it does not adequately identify the nature of the advice and information, and appears to be misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “consulting services in the field of education, namely, providing advice and information about education to international college students studying in the US” in Class 41.

 

The services identified as “consulting services, namely, developing, conducting and arranging instructional programs for international students studying in the US” are classified incorrectly in Class 39.  Applicant must amend the application to classify the services in International Class 41.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

 

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 adopt the following identification and classification of services, if accurate: 

 

 

Class 36: Providing financial advice for international students studying in the US; housing services, namely, rental of student housing

 

Class 39: coordinating travel arrangements, namely, planning, organizing and arranging travel for individuals and groups; providing travel information to international students

 

Class 41: Educational services, namely, providing mentoring and course workshops at the undergraduate and graduate level for international students entering or currently studying in the United States; career counseling, namely, providing advice to international students entering or currently studying in the United States concerning education options to pursue career opportunities; education services, namely, providing non-downloadable webinars featuring courses of instruction at the undergraduate and graduate level for international students entering or currently studying in the United States; training services for international students entering or currently studying in the United States in the field of employment preparation; providing educational services in the nature of classes, seminars, and workshops about social and cultural differences for international students studying in the US; consulting services in the field of education, namely, providing advice and information about education to international college students studying in the US; consulting services, namely, developing, conducting and arranging instructional programs for international students studying in the US

 

Class 45: Providing a website featuring legal information about immigration issues, namely, legal information about international travel and work permit rules and regulations for individuals who travel internationally for educational purposes

 

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).

 

If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

As detailed above, the application identifies services that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 3 classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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.

 

The application references goods and/or 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 goods and/or 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 fee(s) 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 4 classes; however, applicant submitted a fees sufficient for only 3 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 specimens are acceptable for international classes 36, 39, 41, and 45.   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).

 

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

 

 

 

 

 

 

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

 

 

/John M.C. Kelly/

John M.C. Kelly

Examining Attorney

Law Office 119

571-272-9412

john.kelly@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 November 15, 2019 for

U.S. Trademark Application Serial No. 88646362

 

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 M.C. Kelly/

John M.C. Kelly

Examining Attorney

Law Office 119

571-272-9412

john.kelly@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 November 15, 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.”