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:  July 17, 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.

 

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:

• Identification and Classification of Goods and Services
• Multiple Class Application Advisory

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The wording “Printed matter” in the identification of goods is indefinite and must be clarified because the nature of the matter and the subject matter must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Publications; Magazines; Books; Pamphlets; Manuals; Printed guides; Catalogues” in the identification of goods is indefinite and must be clarified because the subject matter must be specified.  Id.

 

The wording “sun visors” and “caps” in the identification of goods is indefinite and must be clarified because the headwear nature of the goods must be specified.  Id.

 

The wording “Mobile phone accessories” in the identification of goods for International Class 009 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass straps and cases adapted for mobile phones in class 009 and mobile phone accessory charms in class 026.

 

The wording “pins” in the identification of goods for International Class 014 must be clarified because it is too broad and could include goods in other international classes.  Id.  In particular, this wording could encompass pins being jewelry in class 014, push pins in class 016 and hair pins in class 026.

 

The wording “entertainment services” in the identification of services is indefinite and must be clarified because the nature of the services must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Electronic publishing services for others” in the identification of services is indefinite and must be clarified because the nature of the publication must be specified.  Id.

 

The wording “Providing of training” in the identification of services is indefinite and must be clarified because the field or subject matter of the training must be specified.  Id.

 

The wording “Organizing contest and incentive award programs for software developers” in the identification of services for International Class 041 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.  In particular, this wording could encompass Organizing contest and incentive award programs for software developers promoting quality in class 035 and Organizing contest and incentive award programs for software developers who engage in live televised debate shows in class 041.

 

The wording “Contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community service and humanitarian activities and sharing of creative work product;” in the identification of services for International Class 041 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.  In particular, this wording could encompass Contest and incentive award programs designed to recognize, reward and encourage employees sharing of creative work product in class 035 and Contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community service and humanitarian activities in class 041.

 

 

The identification for educational services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. 

 

Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

Applicant has classified “Photosharing and video sharing services; Providing online resources for software developers” in International Class 041; however, the proper classification is International Class 042.  Therefore, applicant may respond by (1) adding International Class 042 to the application and reclassifying these services in the proper international class, (2) deleting “sharing and video sharing services; Providing online resources for software developers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate (suggested changes in bold): 

 

Class 009: Cases for smartphones; Protective covers and cases for mobile electronic devices; Grips, stands, and mounts for handheld electronic devices; Mobile phone accessories, namely, {specify accessories e.g. straps, cases adapted for mobile phones, etc.}; Bags and cases specially adapted for holding or carrying handheld electronic devices and accessories

 

Class 014: Pins being jewelry; Ornamental lapel pins

 

Class 016: Printed matter, namely, {specify form of printed matter e.g. books, periodicals, news releases, etc.} in the field of {indicate subject matter}; Publications, namely, {indicate form of publications, e.g., books, hand-outs, workbooks, etc.} in the fields of {indicate subject matter(s) or field(s) of publications}; Magazines in the field of {specify subject matter}; Books in the field of {specify subject matter}; Pamphlets in the field of {specify subject matter}; Manuals in the field of {specify subject matter}; Printed guides for {specify area of use or subject matter}; Catalogues in the field of {indicate specific field of use}; Photographs; Stationery; Pictures; Diaries; Calendars; Photograph albums; Prints; Writing Instruments; Personal organizers; Address books; Notebooks; Office requisites, namely, {specify requisites e.g. staplers, paper trimmers, rubber bands, etc.}; Stickers; Posters; Business cards and non-magnetically encoded identity cards; Pens; Push pins

 

Class 021: Mugs; Cups; Bottle openers; Beverage glassware; Water bottles sold empty; Insulated containers for food or beverages; Insulating flasks; clothes pins

 

Class 025: Clothing for men, women, and children, namely, shirts, t-shirts, jackets, tops, sweat shirts, belts not of leather, coats, vests, blouses, jerseys, bottoms, shorts, pants, trousers, boxer shorts, dresses, skirts, neckties, scarves, bandanas, pajamas, loungewear, socks, sweaters, sweat pants, aprons, sun visors being headwear, slippers, headwear, hats, caps being headwear; footwear

 

Class 026: mobile phone accessory charms; hair pins

 

Class 035: Organizing employee contest and incentive award programs for software developers to promote {indicate specific area, e.g. on the job safety, quality and productivity}; Contest and incentive award programs designed to recognize, reward and encourage employees sharing of creative work product;

 

Class 041: Entertainment services, namely, {Specify}; Electronic publishing services for others, namely, publication of electronic {indicate nature of publication}; Contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community service and humanitarian activities; Organizing contest and incentive award programs for software developers who {indicate nature of entertainment-related activity, e.g., engage in live debate television shows}; Publication of educational materials, namely, publishing of books, journals, newsletters, and electronic publications; Educational services, in particular, namely, organizing and conducting conferences, courses, seminars, and online training in the fields of advertising, marketing, social networking, the internet, and social media, and distribution of course material in connection therewith; Online journals, namely, weblogs (blogs) featuring user-defined content; Education services, namely, providing tutorial sessions in the fields of {indicate subject matter or fields}; Providing of training services in the field of {indicate field or subject matter}; Providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups

 

Class 042: Providing a web site that gives computer users the ability to share photos, videos and video logs; Providing online resources, namely, information in the field of software development for software developers

 

See TMEP §§1402.01, 1402.03

 

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 ADVISORY

 

If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to International Classes 009, 014, 016, 021, 025, 026, 035, 041 and 042.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

The application identifies goods and 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least nine classes; however, applicant submitted a fees sufficient for only six classes.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

RESPONSE

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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

 

 

Murray Jr., George

/George Murray/

Trademark Examining Attorney

Law Office 121

(571) 270-5101

George.Murray@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 July 17, 2020 for

U.S. Trademark Application Serial No. 88882593

 

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. 

 

 

Murray Jr., George

/George Murray/

Trademark Examining Attorney

Law Office 121

(571) 270-5101

George.Murray@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 July 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.”