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:  September 19, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on July 27, 2020 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the examining attorney omitted the complete suggestion for the identification of goods in Class 009.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office action dated July 27, 2020.  The issues raised in the previous July 27, 2020 Office action are as follow and are maintained:  identification and classification of goods and services, mark description, and disclaimer. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Clarification of the identification of goods, “Mobile application involving interaction through natural voice input” in Class 009
• Identification and classification of goods and services
• Mark description incomplete
• Disclaimer

 

Applicant must respond to all issues raised in this Office action and the previous July 27, 2020 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

Identification and Classification of Goods and Services

 

The identification of goods is indefinite and must be clarified because the wording “mobile application” must be specified as to whether they are downloadable, recorded, or non-downloadable and classified accordingly.  Further, “mobile application involving” certain subject matter does not indicate function of software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification of services is indefinite and must be clarified because the wording “Educational services through mobile application for assistive learning for primary grade children” is unclear as to whether applicant is providing educational services or providing mobile application that enables educational services.  Further, if applicant provides educational services, applicant must specify the nature or type of educational services and the field of education being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  

 

Class 009:  {Specify downloadable or recorded} mobile application software enabling online and offline assistive learning for primary grade children which includes features such as voice recognition, voice-enabled assistance involving two way conversations; {Specify downloadable or recorded} mobile application involving interaction through natural voice input; {Specify downloadable or recorded} mobile application for online games and providing in-app awards to enable the process of learning; {Specify downloadable or recorded} mobile application for assisting learning for primary grade children in the field of {specify subject matter, e.g., reading, mathematics, science}

 

Class 041:  Educational services, namely, {specify nature of educational services, e.g., classes of instructions} for assistive learning for primary grade children in the field of {specify subject matter, e.g., reading, mathematics, science} through a mobile application

 

Class 042:  Providing temporary use of a web-based mobile application software enabling online and offline assistive learning for primary grade children which includes features such as voice recognition, voice-enabled assistance involving two way conversations; Providing temporary use of a web-based mobile application involving interaction through natural voice input; Providing temporary use of a web-based mobile application software for online games and providing in-app awards to enable the process of learning; Providing temporary use of a web-based mobile application for assisting learning for primary grade children in the field of {specify subject matter, e.g., reading, mathematics, science}.

 

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 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 3 classes; however, applicant submitted fees sufficient for only 2 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.

 

Fees for Adding Classes

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Mark Description Incomplete

 

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 design of an open book with green covers, where the covers are in the shape of a speech balloon.  The pages of the book are white with light grey text block.  A yellow shooting star appears to be coming out of the pages.  To the right of the design is the wording READ ALONG in darker grey.

 

Disclaimer

 

Applicant must disclaim the wording “READ ALONG” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from The American Heritage Dictionary of the English Language shows the wording READ means “To have the ability to examine and grasp the meaning of (written or printed material in a given language or notion)” and the wording ALONG means “In accompaniment or association; together”.  Thus, the wording merely describes applicant’s goods and services because it indicates that applicant’s goods and service are for the purpose of enabling or teaching users by allowing them to examine and grasp the meaning of written material together.  In addition, please see attached excerpts from five websites that show READ ALONG indicates examining and grasping the meaning of written material together.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “READ ALONG” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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.    

 

 

Janet Lee

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee6@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 September 19, 2020 for

U.S. Trademark Application Serial No. 88910801

 

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. 

 

 

Janet Lee

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee6@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 September 19, 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.”