UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 11/21/2018

 

 

PRIORITY ACTION

 

ISSUES APPLICANT MUST ADDRESS:  On November 19, 2018, the trademark examining attorney and Gregory N. Brescia, Esq. discussed the issue below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

SUMMARY OF ISSUES:

• Refusal – Failure to Function – Goods in Trade

 

REFUSAL – FAILURE TO FUNCTION – GOODS IN TRADE

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 016 ONLY

 

Registration is refused because the goods in International Class 016 in the application do not appear to be independent goods in trade, and appear to be merely incidental to applicant’s services.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; TMEP §1202.06(b).

 

“Goods in trade” are items that an applicant sells or transports in commerce for use by others.  See Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1379-80, 103 USPQ2d 1672, 1675 (Fed. Cir. 2012); TMEP §1202.06.  Incidental items that an applicant uses to conduct its business, such as letterhead, invoices, and business forms, are generally not “goods in trade,” because these items are only useful to the applicant and are not separately sold or distributed to consumers.  TMEP §1202.06; see, e.g., Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1380, 1382, 103 USPQ2d at 1675-76 (holding computer software used for ordering contact lenses not goods in trade where applicant solely provided online retail stores for eyewear products, and software was not sold separately and had no independent value apart from applicant’s primary service); In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (holding reports on subscribers’ securities portfolios not goods in trade where applicant solely provided financial reporting services, and reports were not sold separately and had no independent value apart from applicant’s primary service).

 

Although determining whether an applicant’s goods are independent goods in trade, or merely incidental to the applicant’s services, is made on a case-by-case basis, factors to consider include whether:

 

(1)       The goods are simply the conduit or necessary tool useful only to obtain applicant’s services;

 

(2)       The goods are so inextricably tied to and associated with applicant’s services as to have no viable existence apart from them; and

 

(3)       The goods are neither sold separately from nor have any independent value apart from applicant’s services.

 

In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161-62 (TTAB 2013) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); TMEP §1202.06.  None of these factors is necessarily dispositive.  Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676; TMEP §1202.06.

 

In this case, applicant’s specimen indicates that the “business cards, brochures and newsletters” are not independent goods in trade but rather are merely incidental to applicant’s services because these goods only provide information about applicant’s services and do not have independent value apart from applicant’s primary services.  Furthermore, the specimen does not show that the goods have utility to others as the type of product recited in the application.  Therefore, affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on “goods.” While a formal sale is not always necessary, items sold or transported in commerce are not “goods in trade” unless they have utility to others as the type of product named in the trademark application.  TMEP §1202.06(a).  Thus, based on the specimen of record, applicant does not appear to be the provider of the goods. 

 

Applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f) or amending the application to the Supplemental Register.  TMEP §1202.06(b).

 

Assistance

 

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. 

 

 

EXAMINER’S AMENDMENT

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

The identification of goods is amended to read as follows: 

 

International Class 016:         Printed publications, namely, books, brochures, pamphlets, and printed technical manuals in the fields of health care services; Memo pads; paper sheets for note taking; copy paper; writing pads; paper labels; business cards; Printed matter, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the fields of health care services

 

See TMEP §§1402.01, 1402.01(e).

 

 

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.  

 

 

 

Sahar Nasserghodsi

/Sahar Nasserghodsi/

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/21/2018 FOR U.S. APPLICATION SERIAL NO. 88032151

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 11/21/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.