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: December 30, 2019
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 Results
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).
However, before the mark can be approved for publication, the applicant must respond to the following requirements:
1. Identification and Classification of Services
a. The wording “Collection
and analysis of quality metric data for customer loyalty purposes, namely, collecting and analyzing customer data for the purposes of establishing an individualized customer score which facilitates
design strategy and tactics” in the identification of services is indefinite and must be clarified because the applicant has not indicated that these services are “for business purposes.” Further, the field(s) in which the “design strategy and tactics” are provided must be indicated. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may substitute the following wording, if accurate: Collection and analysis of quality metric data for customer
loyalty purposes, namely, collecting and analyzing customer data for the purposes of establishing an individualized customer score which facilitates advertising and marketing design strategy and
tactics, all for business purposes.
b. Applicant must clarify the identification of services by indicating that the “provides
insight and strategies related to customer engagement, experience, motivation, and loyalty, and frequency of customer communication and transactions” are “marketing” services. See TMEP
§1402.01.
c. The wording “assists
clients with the design, development, execution and maintenance of customer acquisition, customer retention, and brand advocacy programs which promote the sale of goods and services” in the
identification of services is indefinite and must be clarified because the exact nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may substitute the following wording, if accurate: development of marketing strategies, concepts and tactics,
namely, audience development, brand awareness, customer relations, online community building and digital word of mouth communications; advertising services, namely, promoting the brands, goods and
services of others.
d. The wording “provides
strategies and insight to assist and encourage healthcare patients to stay on prescription therapy, to improve medication adherence outcomes, and to increase wellness behaviors including but not
limited to annual visits and tests” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international
classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. While “Doctors' appointment reminder services” are classified
in International Class 35, “Medical screening information services featuring reminder alerts regarding medical examinations that individuals should undergo for preventative care purposes” and
“Prescription refill reminder services” are classified in International Class 44. Applicant may substitute the following wording in Class 35, if
accurate: doctors' appointment reminder services.
e. The wording “including
but not limited to” and “which includes” in the identification of services is indefinite and must be deleted or deleted and replaced with a definite term, such as “namely,” “consisting of,”
“particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be
specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific
services. See TMEP §1402.03(a).
f. The wording
“provides insight, advice and strategies to clients on business planning, business analysis, business management, and business organization” in the identification of services is indefinite and must
be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if
accurate: business consulting, management, and planning services in the field of {indicate field or subject matter}; business data analysis; business management and
organization consultancy.
g. The wording “provides
insight, advice and strategies to clients related to marketing activities and launching of new products or services or programs” in the identification of services is indefinite and must be
clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if
accurate: business consultation and management regarding marketing activities and launching of new products, services, or programs.
h. The wording “provides
insight, advice and strategies to clients related to business evaluations, expert appraisals, information and research” in the identification of services is indefinite and must be clarified because
the exact nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the
following wording, if accurate: business consulting and advisory services relating to business evaluations, expert appraisals, information and research.
i. The wording
“provides insight, advice and strategies as well as the development of processes for the analysis and the implementation of strategy plans and management projects; provides insight, advice and
strategies to clients related to strategy, marketing, production, personnel and retail sale matters” in the identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: business management consultancy as well as development of processes for the analysis and the implementation of strategy plans and management projects; business management
consulting with relation to strategy, marketing, production, personnel and retail sale matters.
j. The wording “for
Business marketing, email, direct mail, web, and other direct marketing consulting services” in the identification of services is indefinite and must be clarified because the exact nature of the
services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if
accurate: business marketing services; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media,
search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; direct marketing services.
k. The wording “creates
marketing tools designed to increase a client company's knowledge of customer needs, and its competitors' products and services, pricing, advertising strategy and sales strategy” in the
identification of services for International Class 35 must be clarified because it is too broad and could include goods and/or in other international classes.
See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This entry was deleted from the Office’s identification and classification manual in 2011 because the
wording “marketing tools” could include brochures and billboards, videos and blogs, and therefore, the entry is overbroad and includes goods and/or services classified in multiple classes.
Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable
identifications of goods and/or services. In this case, however, because the nature of the “creates marketing tools designed to increase a client company's knowledge
of customer needs, and its competitors' products and services, pricing, advertising strategy and sales strategy” services is unclear from the application record, the trademark examining attorney is
unable to suggest any alternative wording in International Class 35. See TMEP §1402.01(e).
In the Class 35 identification of services suggested below, the wording “creates marketing tools designed to increase a client company's knowledge of customer needs, and its
competitors' products and services, pricing, advertising strategy and sales strategy” had been deleted. However, any deleted services may not later be
reinserted. See TMEP §1402.07(e).
l. The wording
“provides market research services, namely, conducting, analyzing, and reporting advanced modeling, consumer purchase and promotion response behavior, promotion execution, frequent shopper customer
behaviors, marketing and consumer purchase and advertising research, loyalty marketing programs, customer loyalty analysis, product category data mining, and promotion and incentives program
analysis” in the identification of services is indefinite and must be clarified because it is unclear whether everything listed in this clause is a type of “market research” service. Further, at least one entry identifies services that are classified in International Class 42, i.e., “product category data mining.”
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: market research
services, namely, conducting, analyzing, and reporting in the fields of advanced consumer behavior modeling, consumer purchase and promotion response behavior, promotion execution, frequent shopper
customer behaviors, marketing and consumer purchase and advertising research, loyalty marketing program analysis, customer loyalty analysis, and promotion and incentives program analysis.
m. The wording “for consulting
services in the area of building consumer loyalty and program marketing” in the identification of services is indefinite and must be clarified because the exact nature of the services is
unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: marketing consulting in the field of developing, instituting, and promoting consumer loyalty programs.
n. The wording “Provide
administration of loyalty and incentive programs; facilitates loyalty, incentive and bonus program services; organizes, operation and supervision of customer loyalty schemes; Manages customer
loyalty, incentive or promotional programs; facilitates customer loyalty services for commercial, promotional and/or advertising purposes” in the identification of services is indefinite and must be
clarified because the exact nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may
substitute the following wording, if accurate: business administration of consumer loyalty programs.
o. The wording “provides
customer service measurement services, employee loyalty measurement services, customer perception and satisfaction measurement services, and brand compliance measurement services” in the
identification of services is indefinite and must be clarified because the exact nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may substitute the following wording, if accurate: customer relationship management; total quality management
services, namely, business management services for establishing business quality policy and determining business means for implementing those policies to improve customer satisfaction.
p. The wording “makes
recommendations for overall marketing spend or branding strategy which includes advertising for business purposes” in the identification of services is indefinite and must be clarified because the
exact nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following
wording, if accurate: brand concept and brand development services for corporate clients; brand evaluation services; advertising services.
q. 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.
r. The application
references services based on use in commerce that may be classified 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 already paid (view the USPTO’s current fee schedule). Specifically, the application identifies services based on use in
commerce that may be classified in at least three classes; however, applicant submitted a fee sufficient for only one class. 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 specimen is acceptable for International Class 35 only. 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.
s. Applicant may adopt the following identification of services in International Class 35, if accurate: Collection and analysis of quality metric data for customer loyalty purposes, namely, collecting and analyzing customer data for the
purposes of establishing an individualized customer score which facilitates advertising and marketing design strategy and tactics, all for business
purposes; Marketing services, namely, providing insight and strategies related to customer engagement, experience, motivation, and loyalty, and frequency of customer
communication and transactions; development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, customer relations, online community
building and digital word of mouth communications; advertising services, namely, promoting the brands, goods and services of others; doctors' appointment reminder services;
business consulting, management, and planning services in the field of {indicate field or subject matter}; business data analysis; business management and organization
consultancy; business consultation and management regarding marketing activities and launching of new products, services, or programs; business consulting
and advisory services relating to business evaluations, expert appraisals, information and research; business management consultancy as well as development of processes for the
analysis and the implementation of strategy plans and management projects; business management consulting with relation to strategy, marketing, production, personnel and retail
sale matters; business marketing services; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search
engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; direct marketing services; market research services, namely, conducting, analyzing, and reporting in the fields of advanced consumer behavior modeling, consumer purchase and promotion response behavior, promotion
execution, frequent shopper customer behaviors, marketing and consumer purchase and advertising research, loyalty marketing program analysis, customer loyalty analysis, and promotion and incentives
program analysis; marketing consulting in the field of developing, instituting, and promoting consumer loyalty programs; business administration of
consumer loyalty programs; customer relationship management; total quality management services, namely, business management services for establishing
business quality policy and determining business means for implementing those policies to improve customer satisfaction; brand concept and brand development services for
corporate clients; brand evaluation services; advertising services. See TMEP §1402.01.
t. If the applicant adds International Class 42 to the
application, it may adopt the following identification of services in that class, if accurate: Product category data mining.
u. If the applicant adds International Class 44 to the
application, it may adopt the following identification of services in that class, if accurate: Medical screening information services featuring reminder alerts
regarding medical examinations that individuals should undergo for preventative care purposes; prescription refill reminder services.
v. Applicant may amend
the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted. See TMEP §1402.07(e).
2. Advisory - Claimed Prior U.S. Registrations
Applicant’s claim of ownership of U.S. Registration Nos. 3776875 and 3685585 will not be printed on any
registration that may issue from this application because the marks are different. Only prior registrations of the same or similar marks are considered related
registrations for purposes of an ownership claim. See 37 C.F.R. §2.36; TMEP §812.
3. Removal from TEAS Plus Status – Additional Processing Fee Required
Applicant filed a TEAS Plus application that identified one or more services from the
USPTO’s U.S. Acceptable
Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format. However, applicant inserted
wording in the identification that is clearly inappropriate or unrelated to the preceding services. At the time of filing, a TEAS Plus application must include an identification of services
from the ID Manual. TMEP §819.01(g); see 37 C.F.R §2.22(a)(8). By inserting inappropriate wording, applicant has, in effect, failed to submit an
identification from the ID Manual. See TMEP §819.01(g).
Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing
fee of $125 per class. See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04. The additional fee is required even if applicant later satisfies this
requirement by properly filling in the blank/deleting the unacceptable wording in the identification. TMEP §819.01(g).
How to respond. Click to file a response to this nonfinal Office
action.
If the applicant has any questions or needs assistance in responding to this Office action, please call the assigned examining attorney.
A prompt response to this Office action will expedite the handling of this matter.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
571-272-9164
Barbara.Gaynor@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.