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:  December 19, 2019

 

 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:

• Amend Identification of Goods
• Amend Identification of Services
• Amend Classifications
• Multi-class Requirements

 

 

 

 

 

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified because applicant must indicate if the software is downloadable or recorded to allow for proper classification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  Downloadable computer application software for listing services in the nature of displaying services offered by service providers, searching for service providers, locating service providers, managing client services in the nature of scheduling appointments and connecting clients to service providers, posting reviews of business or individuals, searching for businesses or individuals based on location and/or services, creating web pages, creating mobile pages, creating profiles and creating, tracking or managing advertising and promotional campaigns, scheduling appointments, managing calendars, managing schedules, posting and viewing information, videos and photos, managing business operations, and managing payments and transactions; Downloadable computer application software for scheduling appointments, managing calendars, managing schedules, and managing business operations in the nature of managing payments and appointment transactions and purchases; Downloadable computer software for providing an on-line database in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications and reports in International Class 9.

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified because applicant must more specifically identify the nature and types of services and more specifically identify subject matter of the services to allow for proper classification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: Arranging and conducting business conferences in International Class 35;

 

Entertainment and education services, namely, providing recognition and incentives by way of celebrations and awards to demonstrate excellence in the field of {indicate field or activity}; Entertainment services, namely, production and distribution of an award show; Entertainment services, namely, contest and incentive award programs and contests designed to recognize and reward program participants who {indicate nature of entertainment-related activity, e.g., engage in live debate television shows}; Entertainment services, namely, providing news and information via a website in the field of beauty and hair, the culture of beauty, hair and beauty and hair product reviews; Entertainment services, namely, arranging, conducting and organization of contests; Educational services, namely, arranging, conducting and organization of seminars, workshops, trainings, classes, exhibitions, presentations and conferences in the field of {indicate subject matter or field} in International Class 41;

 

Providing temporary use of on-line non-downloadable software and non-downloadable software applications for listing services in the nature of displaying services offered by service providers, searching for service providers, locating service providers, managing client services in the nature of scheduling appointments and connecting clients to service providers, posting reviews of business or individuals, searching for businesses or individuals based on location and/or services, creating web pages, creating mobile pages, creating profiles and creating, tracking or managing advertising and promotional campaigns, scheduling appointments, managing calendars, managing schedules, posting and viewing information, videos and photos, managing business operations, and managing payments and transactions; Platform as a service (PAAS) featuring computer software platforms for use in managing business operations to align with business objectives in International Class 42;

 

Making reservations and scheduling appointments for others at hair, nail, makeup and treatment salons and with individual stylists and service providers; Providing information to customers in the fields of beauty services and barber services; Providing a website allowing users to schedule beauty, nail and barber services; in International Class 44.

 

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).

 

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.

 

CLASSIFICATION OF GOODS/SERVICES

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9, 35, 41, 42 and 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es).  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.

 

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. 

 

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.  

 

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

 

 

 

 

/Mark T. Mullen/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 111

(571) 272-9201

mark.mullen@uspto.gov (informal inquiries only)

 

 

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 December 19, 2019 for

U.S. Trademark Application Serial No. 88685916

 

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. 

 

 

/Mark T. Mullen/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 111

(571) 272-9201

mark.mullen@uspto.gov (informal inquirie

 

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 December 19, 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.”