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:  January 15, 2020

 

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.

 

SUMMARY OF ISSUES:

• Identification Indefinite – Amendment Required
• Specimen Does Not Show Mark with Identified Goods or Services – Substitute Specimen Required
• Entity Indefinite – Clarification Required
• Drawing Does Not Reproduce Satisfactorily – New Drawing Required

 

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).

 

IDENTIFICATION INDEFINITE – AMENDMENT REQUIRED

 

The identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 35

 

 The wording “online retail store services, namely, online shopping mall featuring products for which a percentage of sales is given to non-profit charities;” is indefinite and must be amended. Specifically, applicant must clarify the field of goods in which the services are offered.

 

Class 41

 

The wording “educational and entertainment services, namely, providing online interviews and motivational speakers in the field of philanthropy, personal improvement, celebrations and awards, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the field of philanthropic services to underserved communities via a global computer network and mobile electronic networks” is indefinite and must be amended. For interview services, applicant must indicate who is being interviewed. Further, “providing recognition” is a separately defined service. Therefore, it is unclear what services are actually being offered.

 

The wording “blog posts, namely, online journals featuring commentary on advice and information in the field of educational and entertainment activities and events, and on philanthropy” is indefinite and must be amended. Applicant must clarify the nature of the service being provided.

 

 

Applicant may adopt the following identification, if accurate:

 

Class 16 - Printed matter, namely, general feature magazines, newsletters in the field of life style, beauty, clothing, shopping, mental and physical health, fitness, exercise, diet, decorating, art and architecture, interior design, entertainment, food and food recipes, dining, party planning, craft instructions, family projects, family issues, parenting, child development, children and family relations, personal finance, charitable giving, and volunteerism

 

Class 35 - Providing a website featuring product ratings of the consumer products and services of others in the fields of antiques, collectibles, consignment shops, acting, dance musical instruments and lessons, singing and voice lessons, automobile dealerships and repair, financial issues, legal issues, infant child care, funeral services, parent resources, senior care and residential living, eco-friendly products, grocery and gourmet food, health and wellness, home building, home design, home carpentry, home decoration, plumbers, activities and entertainment, real estate, real estate brokerage, party and event planning and entertaining, not-for-profit organizations and giving, pet care, retail store services, sports, travel, and religious and worship institutions; providing a website where users can post items for sale through on-line classified advertisements; promoting the goods and services of others by preparing and placing advertisements in an electronic magazine accessed through a global computer network; Promoting visual and performing arts events by means of providing an online events calendar, original articles, interviews, information about art, artists and art events via an internet web site, all for promotional purposes; providing consumer information services and making referrals in the field of entertainment and retail services for products, services, events, activities, attractions, facilities and locations; providing marketing and promotion of special events; providing online reviews of retail stores; Providing consumer information services and making referrals in the field of entertainment services for products, services, events, activities, facilities and locations; online retail store services, namely, online shopping mall featuring (applicant to specify, e.g., general consumer, etc.) products for which a percentage of sales is given to non-profit charities; providing information in the fields of charitable giving and volunteerism via the internet; Providing consumer information services and making referrals in the field of entertainment services for products, services, events, activities, facilities and locations; promoting visual and performing arts events by means of webisodes featuring events, interviews, arts, and arts events via a global computer network and mobile electronic networks all for promotional purposes; providing consumer information services and making referrals in the field of entertainment and retail services for products, services, events, activities, attractions, facilities and locations; providing marketing and promotion of special events

 

Class 38 - Mobile media services in the nature of electronic transmission of entertainment media content and videos

 

Class 41 - Non-downloadable electronic publications in the nature of general feature magazines and newsletters for women in the field of life style, beauty, clothing, shopping, mental and physical health, fitness, exercise, diet, decorating, art and architecture, interior design, entertainment, food and food recipes, dining, party planning, craft instructions, family projects, family issues, parenting, child development, children and family relations, charitable giving, and volunteerism; entertainment services, namely, providing on-line reviews of community events in the nature of sporting events, wine tastings, music concerts, movies, theatre, fairs and festivals, dance performances, crafts markets, art and architecture; providing a web site where users can post ratings, reviews and recommendations on events and activities in the field of entertainment and education; providing advice and information in the field of educational and entertainment activities and events for children; educational and entertainment services, namely, providing a website in the fields of fitness, exercise, art, entertainment, party planning, craft instructions, parenting concerning education and entertainment of children; organizing community, sporting and cultural events; educational and entertainment services, namely, providing online interviews with (applicant to specify, e.g., educators, celebrities, athletes, etc.) and motivational speakers in the field of philanthropy, personal improvement, celebrations and awards; educational and entertainment services, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the field of philanthropic services to underserved communities via a global computer network and mobile electronic networks; providing blog posts, namely, providing online non-downloadable journals featuring commentary and advice and information in the field of educational and entertainment activities and events, and on philanthropy; Educational and entertainment services, namely, providing ongoing webisodes featuring interviews, speakers, and events in the field of philanthropy, personal improvement, celebrations, and awards to underserved communities via a global computer network and mobile electronic networks

 

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.

 

SPECIMEN DOES NOT SHOW MARK WITH IDENTIFIED GOODS OR SERVICES – SUBSTITUTE SPECIMEN REQUIRED

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Classes 35 and 38 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the specimen does not show the mark in use with providing a website featuring product ratings, or the promotion of goods and services nor the provision of consumer information. The specimen seems to show journalistic coverage of an event. Further, the specimen does not show the service of transmitting media content. Class 38 is for telecommunication services, not information provided through a website.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

ENTITY INDEFINITE – CLARIFICATION REQUIRED

 

The designation “LLC” is included in applicant’s name; however, the legal entity is set forth as a “corporation.”  Generally, “LLC” identifies a “limited liability company,” and not a corporation.  Therefore, applicant must specify whether the legal entity is a limited liability company or a corporation and amend the application accordingly.  TMEP §803.03(h); see 37 C.F.R. §§2.32(a)(2), (a)(3)(ii), 2.61(b).

 

If applicant is a limited liability company, applicant must amend the legal entity and provide the U.S. state under whose laws it is organized.  TMEP §803.03(h).  If applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization.  See TMEP §803.03(c).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

DRAWING DOES NOT REPRODUCE SATISFACTORILY – NEW DRAWING REQUIRED

 

The drawing is not acceptable because it will not create a high quality image when reproduced.  See TMEP §807.04(a).  Specifically, the drawing contains stray marks and pixilation that do not appear to be intended as part of the mark.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.

 

For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.

 

TEAS PLUS AND TEAS RF ADVISORY

 

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.

 

RESPONDING TO THIS OFFICE ACTION

 

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. 

 

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

 

 

/Schmidt, John/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7082

john.schmidt@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 January 15, 2020 for

U.S. Trademark Application Serial No. 88650298

 

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. 

 

 

/Schmidt, John/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7082

john.schmidt@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 15, 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.”