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:  May 23, 2020

 

 

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 of USPTO Database of Marks

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Summary of Issues:

 

• Specimen Unacceptable
• Identification and Classification of Services
• Multiple-Class Application Requirements
• Description of the Mark

 

Specimen Unacceptable

 

The specimens submitted in the application were unacceptable for several reasons, which are described below.

 

Webpage specimen does not include required URL and/or date printed/accessed – Applies to all classes in the application 

 

Applicant submitted a specimen described as “Screenshots from applicant's website showing the mark used in connection with services”, “Screen shots from the Applicant's website showing the applied-for mark used in connection with the applied-for services”, “Screen shots from applicant's website showing applied-for mark used in connection with applied for services”, and “Screenshot from applicant's website showing applied-for mark used in connection with applied-for services”. 

 

Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required URL and/or date printed/accessed.  See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020).  The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce.  See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.03(g), 904.07(a).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and 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).

 

A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce.  37 C.F.R. §2.56(c).  Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. 

 

Please note that the specimen does show applicant’s Class 36 “Debt collection agencies”, but the webpage showing the mark used with the debt collection services contains a URL but does not contain the date accessed.  The next page of the specimen shows a URL and the date/time the webpage was accessed, but this particular webpage just mentions “collections”, and it is not clear that debt collection services are being provided, nor does it show any of applicant’s other services; therefore, this particular page is not acceptable for Class 36 or any of the other classes in the application, even it does contain the URL and date the page was accessed.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

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

 

(1)        Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.

 

(2)        Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, 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.  Applicant must also submit 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.”

 

(3)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.  

 

Mark Differs on Drawing and Specimen – Applies to Classes 36, 37, and 42

 

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 36, 37, and 42, which is required 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); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a). 

 

In this case, the specimen for Classes 36, 37, and 42 displays the mark with a red circle containing a partial letter “S” next to the wording SITEL GROUP.  However, the drawing displays the mark with a red circle containing a partial letter “S” next to the wording SITEL.  The mark on the specimen does not match the mark in the drawing because the mark on the specimen contains an additional word, GROUP.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a). 

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(a)-(b).  The following amended description is suggested, if accurate:  “The mark consists of a red circle with a partial white letter "S" inside the circle next to the wording "SITEL GROUP" in black, lowercase letters.  The aforementioned wording and designs are on a white background.”  Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Please note that amending the mark to contain the wording SITEL GROUP may make the current specimen for Class 35 unacceptable for matching reasons (as the current specimen for Class 35 does match the mark drawing at this time).  Also, amending the mark alone will not address the other specimen issues described above and below.

 

(2)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

Specimen Does Not Show Mark Used in Conjunction with Class 37 Services – Applies to Class 37

 

Specimen does not show use in specific class.  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the services specified in International Class 37.  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); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

Specifically, the specimen does not show the provision of “troubleshooting in the repair and maintenance of telephones, mobile phones, televisions, DVD players, video equipment, cameras, coffee makers and consumer goods; technical support services, namely, troubleshooting in the nature of the repair of computer hardware; consulting in the field of the repair of computer hardware”.  Some pages of the specimen mention “troubleshooting”, but do not specify the nature of the troubleshooting services, i.e. if they are repair/maintenance services or if they are for computer software problem diagnosis, etc.  None of the pages directly mention repair or maintenance services being provided for telephones, mobile phones, televisions, etc.  Therefore, the specimen for Class 37 does not show the applied-for mark as actually used in commerce in connection with any of the services specified in International Class 37.

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

Response options.  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) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Identification and Classification of Services

 

The identification of services is indefinite and must be clarified for the following reasons: 

 

• In Class 35:

o   The wording “business process outsourcing services in the field of product and service sales” and “business process outsourcing services in the field of supply and equipment purchasing” and “business process outsourcing services in the field of back office services” is indefinite and overbroad and can encompass services in a variety of international classes. For example, this wording can encompass human resources management in Class 35, marketing in Class 35, financial analysis in Class 36, and business training in Class 41, amongst other services (as business process outsource service providers render, on an outsourcing basis, a wide variety of services).  Therefore applicant must specify the type of business process outsourcing services being provided, and must classify these services in the correct international class.  Applicant must also comply with the multiple-class application requirements discussed below.

o   The wording “operation of call centers for others” must specify that the services are for operation of telephone call centers for others.

• In Class 36:
• • The wording “Debt collection agencies” must specify that the services are debt collection agency services, as per Nice Classification, Tenth edition, version 2016 (effective Jan. 16, 2016).
• In Class 37:
• • The wording “Technical support, namely, troubleshooting in the repair and maintenance of telephones, mobile phones, televisions, DVD players, video equipment, cameras, coffee makers and consumer goods” must specify that the services are in the nature of repair and maintenance of telephones, mobile phones, etc. and also must specify the type of consumers goods being repaired or maintained.

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, if accurate (changes in bold):

 

International Class 35: Customer services, namely, responding to customer inquiries for

others in the field of product and service sales, billing, and product/service information and repair or replacement by telephone, internet, in the nature of chat and moderation, e-mail and SMS for others; business process outsourcing services, namely, human resources management in the field of product and service sales; business process outsourcing services, namely, human resources management in the field of supply and equipment purchasing; business process outsourcing services, namely, human resources management in the field of back office services; operation of telephone call centers for others

 

International Class 36: Debt collection agency services; business process outsourcing

services, namely, financial analysis in the field of product and service sales; business process outsourcing services, namely, financial analysis in the field of supply and equipment purchasing; business process outsourcing services, namely, financial analysis in the field of back office services

 

International Class 37: Technical support, namely, troubleshooting in the nature of repair

and maintenance of telephones, mobile phones, televisions, DVD players, video equipment, cameras, coffee makers and consumer goods in the nature of {specify the type of goods}; technical support services, namely, troubleshooting in the nature of the repair of computer hardware; consulting in the field of the repair of computer hardware

 

International Class 41: business process outsourcing services, namely, business

training in the field of product and service sales; business process outsourcing services, namely, business training in the field of supply and equipment purchasing; business process outsourcing services, namely, business training in the field of back office services

 

International Class 42: Technical support, namely, troubleshooting in the nature of

diagnosing computer hardware and software program problems

 

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.

 

Multiple-Class Application Requirements

 

The application references 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 goods and/or services based on use in commerce that are classified in at least five classes; however, applicant submitted fees sufficient for only four 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 specimen is not acceptable for any international class.  See more information about specimens.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

Description of the Mark

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate: 

 

The mark consists of a red circle with a partial white letter "S" inside the circle next to the word "SITEL" in black, lowercase letters.  The aforementioned wording and designs are on a white background.

 

Response Options

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.    

 

 

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

571-272-4031

Jessica.Hilliard@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 May 23, 2020 for

U.S. Trademark Application Serial No. 88813092

 

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. 

 

 

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

571-272-4031

Jessica.Hilliard@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 May 23, 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.”