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:  November 21, 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:

• Substitute Specimen Required
• Classification Of Goods/Services – Amendment Required
• Identification Of Goods – Amendment Required
• Identification Of Services – Amendment Required

 

SUBSTITUTE SPECIMEN REQUIRED

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY

 

Specimen does not show use in specific class(es).  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods and/or services specified in International Class 9.  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.  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, in this case the applicant submitted screen captures of the applicant’s website showing the applied-for mark in connection with numerous goods and services. However, none of the documents and screen captures shows the applied-for mark used in connection with a downloadable podcast. Rather, the submitted specimen does show use of the applied-for mark in connection with podcast in general however it cannot be determined from the specimen if the podcast is downloadable or not. Moreover, the goods listed in the application in Class 9 are not actually Class 9 goods because they are non-downloadable. Therefore, none of the submitted specimens are acceptable to show use of the actual Class 9 goods.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

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 must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

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 and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application. 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.”  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(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

CLASSIFICATION OF GOODS/SERVICES

 

Applicant has classified “Downloadable podcasts in the fields of team and personal improvement, leadership development, culture and behavior” in International Class 41; however, the proper classification is International Class 9.  Therefore, applicant may respond by reclassifying these goods and/or services in the proper international class or deleting “downloadable podcasts in the fields of team and personal improvement, leadership development, culture and behavior;” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or 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.

 

IDENTIFICATION OF GOODS

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The wording “Non-downloadable educational course materials in the fields of leadership, culture and behavior; Non-downloadable training course materials in the fields of leadership, culture and behavior” in the identification of goods for International Class 9 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. 

 

Specifically, applicant must clarify whether “publication” identifies a print publication in International Class 16, an electronic publication in International Class 9 or 41, an online/Internet publication in International Class 41, print publishing services in International Class 41, and/or electronic or online publishing services in International Class 41, and amend this word to provide the additional information specified below for such goods and services. 

 

If “publication” identifies a print publication, applicant must indicate both the specific physical nature (e.g., pamphlet, brochure, newsletter, journal, or magazine) and the literary subject matter of the publication.  TMEP §§1402.03(e), 1402.07(b).  For example, “magazine in the field of medicine,” “book and pamphlet in the field of financial classification of companies and securities,” and “newsletter about television programs,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publication, the identification may specify the general character or type of publication; e.g., “a general feature magazine” is acceptable in International Class 16.  TMEP §1402.03(e). 

 

If “publication” identifies print publishing services for others in International Class 41, applicant must indicate the type of publication being published, such as books, magazines, or journals (e.g., “book publishing,” “newspaper publishing,” or “magazine publishing”).  See TMEP §§1402.01, 1402.07(b).  However, publishing one’s own publication is not such a service, because it is done primarily for applicant’s benefit and not that of others.  TMEP §1301.01(b)(iii).  In that case, applicant would need to seek registration for the print publication only, and not for publishing services.

 

If “publication” identifies an electronic or online/Internet publication, applicant must specify (1) the common name of the type of publication, such as brochures, newsletters, or magazines; and (2) the subject matter of the publication.  See TMEP §1402.03(e).  If the subject matter is not a significant aspect of the publication, the identification may specify the general character or type of the publication (e.g., downloadable electronic publication in the nature of a general feature magazine is acceptable in International Class 9).  Id.  Additionally, for an electronic publication, applicant must clarify whether the publication is downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or is an online non-downloadable publication in International Class 41.  See TMEP §§1402.07(b), 1402.11(a)(x). 

 

If applicant is providing electronic or online/Internet publishing services for others in International Class 41, then applicant must indicate the name of the type of publication being published (e.g., pamphlets, brochures, newsletters, journals, or magazines).  See TMEP §§1402.07(b), 1402.11(a)(x).  However, publishing one’s own publication electronically or online is not such a service, because it is done primarily for applicant’s benefit and not that of others.  TMEP §1301.01(b)(iii).  In that case, applicant would need to seek registration for the electronic or online/Internet publication only, and not for publishing services.

 

The following are examples of acceptable formats for identifications for an electronic or online/Internet publication (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publication in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publication, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9;

 

Non-downloadable electronic publication in the nature of {indicate specific nature of publication} in the field of {indicate subject matter} in International Class 41; or

 

Providing an online non-downloadable publication in the nature of {indicate specific type of publication} in the field of {indicate subject matter} in International Class 41.

 

Applicant may substitute the following wording, if accurate:

 

No changes to Class 16 required.

 

International Class 9

“Downloadable podcasts in the fields of team and personal improvement, leadership development, culture and behavior; (moved from Class 41).”

 

IDENTIFICATION OF SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wording “Executive coaching services; Conducting workshops and seminars for teams and their players in the fields of leadership development, culture and behavior; Keynote speaking services in the fields of business, education, and professional and personal development; Educational services, namely, providing training in the fields of team and personal improvement, leadership development, culture and behavior” in the identification of services is indefinite and must be clarified because  it is unclear the nature and/or purpose of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:

 

No changes to Class 35 required.

 

International Class 41

“Leadership development training services in the fields of business, education and athletics; Business education and training services, namely, executive coaching services; Business education and training services, namely, developing customized in-company and in-team leadership development programs, providing executive coaching services, and providing public in-company and in-team keynote presentations to business and team leaders; Conducting workshops and seminars for organizations and their employees in the fields of leadership development, culture and behavior; Conducting workshops and seminars for sports teams and their players in the fields of leadership development, culture and behavior; Educational and entertainment services, namely, providing keynote speaking services in the fields of business, education, and professional and personal development; Providing online non-downloadable training courses in the fields of productivity and personal and professional development; Educational services, namely, providing training to {applicant must specify who or what is being trained} in the fields of team and personal improvement, leadership development, culture and behavior; Business training consultancy services; Professional and organizational coaching services in the fields of leadership development, culture and behavior; Educational services, namely, providing mentoring, lectures, classes and workshops in the fields of personal growth and career and business advisement; Entertainment services, namely, providing podcasts in the fields of team and personal improvement, leadership development, culture and behavior; Online journals, namely, blogs featuring articles in the fields of team and personal improvement, leadership development, culture and behavior; Non-downloadable electronic publications in the nature of educational course materials in the fields of leadership, culture and behavior; Non-downloadable electronic publications in the nature of training course materials in the fields of leadership, culture and behavior.”

 

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.

 

RESPONSE GUIDELINES

 

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.

 

If applicant does not timely respond to this Office action, the following goods and/or services will be deleted from the application: “Non-downloadable educational course materials in the fields of leadership, culture and behavior; Non-downloadable training course materials in the fields of leadership, culture and behavior” in Class 9; and “Executive coaching services; Conducting workshops and seminars for teams and their players in the fields of leadership development, culture and behavior; Keynote speaking services in the fields of business, education, and professional and personal development; Educational services, namely, providing training in the fields of team and personal improvement, leadership development, culture and behavior; Downloadable podcasts in the fields of team and personal improvement, leadership development, culture and behavior” in Class 41.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following goods and services only: “Printed training materials in the fields of leadership, culture and behavior; Printed educational materials in the fields of leadership, culture and behavior” in Class 16; “Business consulting services in the fields of leadership, culture and behavior; Business management consultation; Business organizational consultation” in Class 35; and “Leadership development training services in the fields of business, education and athletics; Business education and training services, namely, developing customized in-company and in-team leadership development programs, providing executive coaching services, and providing public in-company and in-team keynote presentations to business and team leaders; Conducting workshops and seminars for organizations and their employees in the fields of leadership development, culture and behavior; Providing online non-downloadable training courses in the fields of productivity and personal and professional development; Business training consultancy services; Professional and organizational coaching services in the fields of leadership development, culture and behavior; Educational services, namely, providing mentoring, lectures, classes and workshops in the fields of personal growth and career and business advisement; Entertainment services, namely, providing podcasts in the fields of team and personal improvement, leadership development, culture and behavior; Online journals, namely, blogs featuring articles in the fields of team and personal improvement, leadership development, culture and behavior” in Class 41.  See TMEP §718.02(a). 

 

 

 

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

 

 

/L. Dantzler/

Lauren A. Dantzler

Examining Attorney

Law Office 122

(571) 272-7348

lauren.dantzler@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 November 21, 2020 for

U.S. Trademark Application Serial No. 90083593

 

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. 

 

 

/L. Dantzler/

Lauren A. Dantzler

Examining Attorney

Law Office 122

(571) 272-7348

lauren.dantzler@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 November 21, 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.”