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:  October 22, 2020

 

This application was approved for publication on September 26, 2020.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

 

IDENTIFICATION OF SERVICES

 

The wording “organizing of software and technology competitions and hackathons” in the identification of services is indefinite and overbroad and must be clarified. The ID potentially identifies services in multiple classes.

 

With regard to organizing competitions, the ID potentially identifies organizing business competitions in the fields identified to facilitate business activities in Class 35 (see, e.g., Term ID 035-2876 Arranging and conducting business competitions for {indicate, e.g., businesses, entrepreneurs, etc.} to compete for {indicate, e.g., seed capital, business marketing support, business technology support, etc.} to facilitate business activities) or organizing competitions in the fields identified for entertainment purposes in Class 41 (see, e.g., Term ID 041-1552 Entertainment and educational services in the nature of competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields).

 

With regard to organizing hackathons, the ID potentially identifies organization of events in the nature of hackathons for business or commercial purposes in Class 35 (see, e.g., Term ID 035-1882 Organisation of exhibitions and events for commercial or advertising purposes) or organization of special events in the nature of hackathons for social entertainment purposes in Class 41 (see, e.g., Term ID 041-1257 Arranging and conducting special events for social entertainment purposes).

 

Please clarify the services and, if necessary, reclassify the services.

 

In addition, the ID "educational services, namely, conducting live and online classes, seminars, conferences, and workshops in the field of computer software technology development, and distribution of course material and promotional materials in connection therewith" is misclassified in part as to "educational services, namely, … distribution of … promotional materials in connection therewith" and must be clarified. While distribution of course and educational material in connection with educational services is a Class 41 activity, distribution of promotional materials is classified in Class 35. Please see, by analogy, Term ID 035-1638 (Distribution of advertising materials). Please reclassify the portion of the services at issue.      

 

  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

International Class 035: organizing software and technology competitions to facilitate business activities; organization of events in the nature of hackathons for business or commercial purposes; Promoting the goods and services of others by distributing advertising materials through a variety of methods

 

International Class 041: organizing software and technology competitions for entertainment purposes; organization of special events in the nature of hackathons for social entertainment purposes;  Entertainment in the nature of competitions in the field of software and technology development and hackathons for social entertainment purposes; Educational services, namely, conducting live and online classes, seminars, conferences, and workshops in the field of computer software technology development, and distribution of course material in connection therewith

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  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.

 

 

 

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

 

 

/R.M. Herrera/

Roselle M. Herrera

Trademark Examining Attorney

Law Office 124

(571) 272-1909

Roselle.Herrera@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 October 22, 2020 for

U.S. Trademark Application Serial No. 90017914

 

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. 

 

 

/R.M. Herrera/

Roselle M. Herrera

Trademark Examining Attorney

Law Office 124

(571) 272-1909

Roselle.Herrera@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 October 22, 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.”