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:  March 17, 2020

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Summary of Issues That Must Be Addressed

•           Identification of Goods

•           Recitation of Services

•           Additional Classes Identified in Application

Search of Office Records

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods

The identification of goods identified below in bold, italicized and underlined wording is indefinite and must be clarified as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording, if accurate:

 

Class 9

Books in the field of animal and dog behavior modification; digital media, namely, pre-recorded video cassettes, DVDs and downloadable video recordings featuring information about animal and dog behavior modification; downloadable podcasts in the field of animal and dog behavior modification;

 

Printed and electronic publications, namely, books and booklets for education and training in the field of animal and dog behavior and positive training for animals and dogs is unacceptable because the applicant must indicate whether the electronic publications are downloadable or recorded on computer media and printed publications are properly classified in Class 16 and the following is suggested:  Downloadable electronic publications, namely, books and booklets for education and training in the field of animal and dog behavior and positive training for animals and dogs AND/OR Electronic publications recorded on computer media, namely, books and booklets for education and training in the field of animal and dog behavior and positive training for animals and dogs;

 

Educational videos; Training videos is unacceptable because to be properly classified in Class 9 the applicant must identify the goods as video recordings and clearly indicate the field and the following is suggested:  Video recordings featuring training and education about [specify subject matter, e.g., animal and dog behavior];

 

Downloadable podcasts must be amended to indicate the field or subject matter]

 

Software in the form of apps for animal training and for providing information on positive animal training and behaviour modification;

 

Software in the form of apps for dog training and for providing information on positive dog training and behaviour modification;

 

Clothing and apparel must be amended to specify the goods by name and properly classified in Class 25. 

 

Dog accessories and apparel must be amended to specify the accessories by name and dog apparel is properly classified in Class 18;

 

leashes, harnesses, collars is unacceptable because the applicant must specify the type of leashes and collars and may be amended to:  animal leashes, harnesses and collars for animals;

 

Animal and dog training aids is unacceptable because the applicant must specify the aids by name and may be amended to:  animal and dog training aids, namely, electronic collars;

 

Animal treats, Horse Treats, Pet treats, Dog treats must be amended to specify that the treats are edible and must classify these goods in Class 31;

 

doggy bags is unacceptable and should be amended to: paper take-out bags for food, in Class 16. 

 

Class 16

Printed publications, namely, books and booklets for education and training in the field of animal and dog behavior and positive training for animals and dogs; Paper take-out bags for food, in Class 16. 

 

Class 18

Dog apparel; Dog accessories, namely, [specify accessories by name, e.g., dog collars and leads, dog shoes, etc.], in Class 18.

 

Class 25

Clothing and apparel, namely, [specify goods by name, e.g., shirts, shorts, pants, sweaters, etc.], in Class 25. 

 

Class 31

Edible animal treats; edible horse treats; edible pet treats; edible dog treats, in Class 31. 

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and services:

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

Recitation of Services

The identification of services identified below in bold, italicized and underlined wording is unacceptable and must be amended as suggested.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may adopt the following wording, if accurate:

 

Class 35

Online retail store services featuring animal and dog behavior modification goods and these services are properly classified in Class 35. 

 

Class 38

Providing on-line chat rooms for transmission of messages among computer users concerning dog training and dog behavior and video conferencing services, in Class 38. 

 

Class 41

Training of animals; Obedience training for animals; Animal behaviour training;

 

Positive animal training is unacceptable because it is unclear what positive animal training is;

 

Training of dogs; Obedience training for dogs; Dog behaviour training;

 

Positive dog training is unacceptable because it is unclear what positive dog training is; 

 

Teaching, communicating and establishing behavior modification techniques and methodologies to enable others to reproduce the same techniques in animal care and training is overly broad and may be amended to: developing training systems and learning methodologies in the field of animal care and training for others;

 

Teaching, communicating and establishing behavior modification techniques and methodologies to enable others to reproduce the same techniques in dog care and training is overly broad and may be amended to: developing training systems and learning methodologies in the field of dog care and training for others

 

teaching, communicating and establishing behavior modification techniques, methods and training for animals is overly broad and is covered by the wording suggested above;

 

teaching, communicating and establishing behavior modification techniques, methods and training for dogs is overly broad and is covered by the wording suggested above;  

 

establishing a training system for behavior modification of animals; establishing a training system for behavior modification of dogs; establishing methods, techniques and a training system for use by others including trainers and owners of animals and trainers for dogs; is overly broad and is covered by the wording suggested above;   

 

teaching, training, communicating and establishing educational methods, techniques and systems for training trainers of domesticated animals and dogs and for training owners of domesticated animals and dogs is overly broad and may be amended to: developing training systems and learning methodologies in the field of training domesticated animals and dogs for animal and dog trainers;

 

teaching, training, communicating and establishing educational methods, techniques and systems for training trainers of wild animals is overly broad and may be amended to: developing training systems and learning methodologies in the field of training wild animals for wild animal trainers;

 

teaching, training, communicating and establishing educational methods, techniques and systems for training zoo staff for the care and training of zoo animals is overly broad and may be amended to: developing training systems and learning methodologies in the field of zoo animal care and training for zoo trainers; 

 

Conducting and providing facilities for animal exhibitions and demonstrations to exhibit behavioral modification methods, systems and techniques for training of animals with live or virtual animals is unclear and not concisely worded and may be amended to:  providing facilities featuring live animal exhibitions and demonstrations featuring the training of animals;

 

Use of animation to teach proprietary methods, systems and techniques for training for positive animal behavior modification is unacceptable as the “use of” is not a service that is available to consumers and this entry may be amended to: developing training systems and learning methodologies in the field of zoo animal care and training for zoo trainers

 

Conducting and providing facilities for dog exhibitions and demonstrations to exhibit behavioral modification systems and for training of dogs through the use of live or virtual dogs, pets, or other animals is unclear and not concisely worded and may be amended to:  providing facilities featuring live dog exhibitions and demonstrations featuring the training of dogs, pets and other animals;

 

Use of animation to teach proprietary methods and techniques for training for positive dog behavior modification is unacceptable as the “use of” is not a service that is available to consumers and this entry may be amended to: developing training systems and learning methodologies in the field of zoo animal care and training for zoo trainers

 

Animal agility training; Dog agility training;

 

Teaching and communicating through courses and programs methods and techniques for positive dog agility training and for positive animal agility training is overly broad and may be amended to:  teaching in the field of dog and animal agility training; 

 

Educational methods and programs for animal behavior modification is unclear and may be amended to:  educational services, namely, conducting programs in the field of animal behavior modification;

 

Educational methods and programs for dog behavior modification is unclear and may be amended to:  educational services, namely, conducting programs in the field of dog behavior modification;

 

Animal sports programming designed to enhance behavior and human-animal relationships; Dog sports programming designed to enhance behavior and human-dog relationships is unacceptable because it is unclear what these services are and the examining attorney is unable to provide a suggestion;  

 

Animal sports training which offers an outlet for natural and instinctive behaviors of the animal and thereby which allows the animal to feel 'fulfilled' and this activity especially when done together with the human creates an enhanced relationship and happier animal is not presented in a concise manner and ultimately it is difficult to determine the actual services being provided and the applicant may amend to:  Animal training that aims to achieve a fulfilled and happier animal;  

 

Dog sports training which offers an outlet for natural and instinctive behaviors of the dog and thereby which allows the dog to feel 'fulfilled' and this activity especially when done together with the human creates an enhanced relationship and happier dog is not presented in a concise manner and ultimately it is difficult to determine the actual services being provided and the applicant may amend to:  Dog training that aims to achieve a fulfilled and happier dog;  

 

Educational programming is overly broad and may be amended to: Educational services, namely, conducting programs in the field of [indicate subject matter];

 

Training and behaviour modification programs is overly broad and may be amended to:  training services in the field of modifying the behavior of [indicate what or whose behavior will be modified, e.g., animals]; 

 

Entertainment services is overly broad and the applicant must specify the type of entertainment services being provided; 

 

Operation of a channel on a video sharing website is unclear and the examining attorney is unable to provide a suggestion; 

 

Operation of an online store to sell goods and services in the field of animal and dog behavior modification should be amended to: online retail store services featuring animal and dog behavior modification goods and these services are properly classified in Class 35; 

 

methodologies for animal and dog behavior is unclear and may be covered by the wording suggested above; 

 

books, videos, DVDs, multimedia digital products, podcasts, all in the field of animal and dog behavior modification are all goods and the applicant must specify the type of multimedia digital products and properly classify these goods in Class 9 as:  Books in the field of animal and dog behavior modification; digital media, namely, pre-recorded video cassettes, DVDs and downloadable video recordings featuring information about animal and dog behavior modification; downloadable podcasts in the field of animal and dog behavior modification, in Class 9;

 

counselling services, coaching services, consulting services, all in the field of animal and dog behavior modification should be amended to: coaching in the field of animal and dog behavior modification AND Counseling and consultation services in the field of modifying animal and dog behavior, in Class 44;

 

Consulting and counselling services is overly broad as the applicant must indicate the field of the services; 

 

one on one consulting and counselling services provided online over the internet including by Skype is unacceptable as being overly broad, the applicant must indicate the field of the services, and finally the applicant must delete any registered trademarks from the recitation, namely, “Skype”; 

 

group consulting and counselling services provided online over the internet, including by Skype is unacceptable as being overly broad, the applicant must indicate the field of the services, and finally the applicant must delete any registered trademarks from the recitation, namely, “Skype”; 

 

Educational services is unacceptable because the application must specify the type of educational services, e.g., educational services, namely, conducting [indicate mode of instruction, e.g., classes, workshops, seminars, etc.] in the field of [indicate field or subject matter of services]; 

 

Video chat and video conference assisted coaching sessions in the field of dog training and dog behavior; should be amended to: Providing on-line chat rooms for transmission of messages among computer users concerning dog training and dog behavior and video conferencing services, in Class 38. 

 

Class 44

Counseling and consultation services in the field of modifying animal and dog behavior, in Class 44. 

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the present identification.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and services:

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

Additional Classes Identified in Application

 The application identifies goods and/or services that are classified in at least nine classes; however, applicant submitted fees sufficient for only two 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.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

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 USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application.  See 37 C.F.R. §2.6(a)(iii).  The fee for adding classes to a TEAS Standard application is $275 per class.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

Filing Basis – Advisory

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

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

 

 

/Giancarlo Castro/

Giancarlo Castro

Trademark Examining Attorney

Law Office 110

giancarlo.castro@uspto.gov

571-272-9357

 

 

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 March 17, 2020 for

U.S. Trademark Application Serial No. 88721293

 

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. 

 

 

/Giancarlo Castro/

Giancarlo Castro

Trademark Examining Attorney

Law Office 110

giancarlo.castro@uspto.gov

571-272-9357

 

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 March 17, 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.”