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:  January 28, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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:

• Clarification of Classification and Identification of Goods and/or Services Required
• Multiple-Class Application Requirements

 

CLARIFICATION OF CLASSIFICATION AND IDENTIFICATION OF GOODS REQUIRED

 

Given the nature of the misclassification of goods and services in the identification, applicant’s attorney is highly encouraged to seek 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.

 

Applicant has classified the following goods and/or services in International Class 14:  “NFC enabled pins; online retail services featuring ornamental pins, NFC enabled pins, jewelry pins, physical and virtual merchandise and memorabilia associated with electronic games or virtual communities; on-line retail store services featuring physical and virtual merchandise for use by members of an online community in connection with a designated website or software application featuring fictional characters”.  

 

However, the proper classification for each item is as follows: 

 

            Class 9:  NFC pins

 

Class 35:  online retail services featuring ornamental pins, NFC enabled pins, jewelry pins, physical and virtual merchandise and memorabilia associated with electronic games or virtual communities; on-line retail store services featuring physical and virtual merchandise for use by members of an online community in connection with a designated website or software application featuring fictional characters

 

Additionally, applicant has provided the application fee(s) for only 1 international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86(a).

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  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 application requirements specified in this Office action.

 

Further, the wording identified below is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording does not make clear the nature of the goods and/or services and could include goods in different classes, such as “sewing pins” in Class 26, “lapel pins” in Class 14, or “near field communication pins” in Class 9.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9:  Near field communication (NFC) pins for {specify function or purpose, e.g., making mobile payments, providing advertising information}

 

Class 14:  NFC enabled pins; pins being jewelry; ornamental lapel pins; jewelry pins; online retail services featuring ornamental pins, NFC enabled pins, jewelry pins, physical and virtual merchandise and memorabilia associated with electronic games or virtual communities; on-line retail store services featuring physical and virtual merchandise for use by members of an online community in connection with a designated website or software application featuring fictional characters

 

Class 35:   online retail services featuring ornamental pins, near field communication (NFC) enabled pins, jewelry pins, physical and virtual merchandise and memorabilia being {specify type of merchandise and memorabilia, e.g., clothing, trading cards, and figurines} associated with electronic games or virtual communities; on-line retail store services featuring physical and virtual merchandise  being {specify type of merchandise and memorabilia, e.g., clothing, trading cards, and figurines} for use by members of an online community in connection with a designated website or software application featuring fictional characters

 

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).

 

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/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 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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.

 

ASSISTANCE

 

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.    

 

 

/Elizabeth A. O'Brien/

Examining Attorney

Law Office 105

(571) 272-0046

Elizabeth.OBrien@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 January 28, 2021 for

U.S. Trademark Application Serial No. 90175015

 

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. 

 

 

/Elizabeth A. O'Brien/

Examining Attorney

Law Office 105

(571) 272-0046

Elizabeth.OBrien@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 January 28, 2021, 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.”