United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90251454
Mark: BOSS
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Correspondence Address:
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Applicant: HUBB UCS Corp.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: March 19, 2021
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Applicant’s applied-for mark is “BOSS” in standard characters. The registered marks are listed above.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In the present case, applicant’s mark, “BOSS”, is identical to the literal elements of the marks in the following registrations: U.S. Registration Nos. 1890886, 4841763, and 6209216. These marks are virtually identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are virtually identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the literal elements of the marks are confusingly similar.
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, applicant’s mark is “BOSS”, which removes the additional terms from the following marks: “FOLLOW UP” in U.S. Registration No. 4670912; “I” in U.S. Registration Nos. 4792906, 5072006, 5802842, and 5876142; “PROPERTY” in U.S. Registration No. 5100320; “FEM” in U.S. Registration No. 5240637; “BUSINESS OPTIMIZATION SOLUTION STACK” in U.S. Registration No. 5807685; and “PROPERTY” and “SOLUTIONS” in U.S. Registration No. 6162549. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
Moreover, the additional wording in the registered marks referenced above is merely descriptive of the registrants’ goods and/or services. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the shared wording “BOSS” the more dominant element of the marks.
Although the marks in U.S. Registration Nos. 5072006, 5876142, 6162549, and 6209216 contain design elements, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the literal elements of the marks are confusingly similar.
Relatedness of Goods and/or Services
Applicant’s services are: “Software as a service (SAAS) services featuring software for providing data analytics, business analytics, business intelligence and for collecting and analyzing data in the fields of business, marketing, advertising, brand development, sales, customer service, cloud computing, customer information, customer relationship management, employee efficiency, and security and authentication; platform as a service (PaaS) software in the nature of a database for compiling data, customer data and customer interactions for enabling marketers to plan, personalize, optimize and customize communications with customers throughout the marketing, sales, and service lifecycle; platform as a service (PaaS) featuring computer software platforms for retrieving, tracking, analyzing, testing, measuring and managing data, customer data and customer interactions in the fields of business, marketing, advertising, brand development, sales, customer service, cloud computing, customer information, customer relationship management, employee efficiency, and security and authentication; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan, personalize, optimize, monitor, analyze and measure customer interactions across channels and devices; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan, personalize, optimize, monitor, analyze and measure customer interactions across social media, customer relationship management (CRM) systems, point-of-sale systems, web analytics, web posts, email and mobile devices; providing temporary use of online non-downloadable software for the optimization of online websites for third parties for marketing purposes; consulting services in the field of providing online, non-downloadable software and applications; providing temporary use of on-line non-downloadable software for creating and customizing computer and mobile application software functionality, integrating data, and automating business processes; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others, and consulting services related thereto; technical research in the field of designing and developing computers and computer software systems for use in connection with automated business processes, business development tools, and business and data analytics; information technology consulting services; installation of computer software; computer system design and analysis; data conversion of computer programs and data; maintenance of computer software; monitoring of computer systems by remote access to ensure proper functioning; rental of computer software and web servers; scientific and technological services, namely, research and design in the field of computer software design and development; industry analysis and research services in the field of computer and mobile application software development; design and development of computer software; computer software consultancy; computer system design and analysis, namely, designing of computer systems for posting images, links, videos, text and other brand content, for retrieving, sorting, filtering and moderating user generated content and online communications, for managing brand content on social media websites and social networks, and for analyzing, retrieving and managing the performance of brand engagement; creating and maintaining web sites for others; providing search engines for the internet; styling services, namely, website and mobile application design services; web site design consultancy; providing temporary use of online non-downloadable software for generating embeddable code for websites, for the purpose of creating, customizing, deploying, scheduling, tracking, analyzing and managing online content on users' websites, on social media websites and other online forums, and for analyzing, monitoring and managing the performance of brand engagement of others; providing temporary use of online non-downloadable software for creating and deploying customized interactive content on social profiles; conducting technical project feasibility studies in the field of computer software design and development; quality control, namely, computer monitoring service which tracks application software performance, performs periodic software maintenance and provides reports and alerts concerning such performance; recovery of computer data; research and development of new products for others; server hosting; providing non-downloadable software for monitoring of social network sites and online content for others for the purpose of monitoring, analyzing, testing, and reporting about brand content on social media websites and social networks, and about the performance of online brand engagement; providing temporary use of on-line non-downloadable software development tools for the creation of mobile internet applications and client interfaces; providing temporary use of on-line non-downloadable cloud computing software for providing business data analytics, business analytics, business intelligence and for collecting and analyzing business data”.
The registrants’ goods and services are listed above. These goods and services are related because they are identical and overlap.
In this case, the “IT consulting services” identified in U.S. Registration No. 5807685 are identical to applicant’s “information technology consulting services.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
Particular broad wording used in the application presumably encompasses all services of the type described, including more narrowly identified services in the registrations. Specifically:
Similarly, particular broad wording used in the registrations presumably encompasses all services of the type described, including more narrowly identified services in the application. Specifically:
See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrants’ services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrants’ goods and/or services are related.
For the foregoing reasons, registration is refused under Section 2(d) of the Trademark Act.
Applicant should note the following potential grounds for refusal.
POTENTIAL REFUSAL – PRIOR-FILED APPLICATIONS
The filing dates or effective filing dates of pending U.S. Application Serial Nos. 79249577, 79302960, 86460420, and 88464979 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the following additional ground for refusal.
REFUSAL – OTHERWISE ACCEPTABLE WEBPAGE SPECIMEN
LACKS REQUIRED DATE ACCESSED
Webpage specimen does not include required date printed/accessed. Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required date printed/accessed. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a). Thus, it is unclear whether the specimen shows the applied-for mark in actual use in commerce. See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.03(g), 904.07(a). 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 services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
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). Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. TMEP §§904.03(i), 1301.04(a).
Examples of specimens. 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).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed directly on the specimen itself or in a separate statement, that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. Applicant must also submit 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 or prior to the filing of the amendment to allege use.”
(3) 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.
REQUIREMENT – IDENTIFICATION & CLASSIFICATION OF SERVICES
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or
services which should be removed, it will be shown with a line through it such as this: strikethrough. When making
its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 35: Providing an on-line searchable database featuring business information related to customer data and customer interactions for enabling marketers to plan, personalize, optimize and customize communications with customers throughout the marketing, sales, and service lifecycle
Class 42: “Software as a service (SAAS) services featuring software for providing data analytics, business analytics, business intelligence and for collecting and
analyzing data in the fields of business, marketing, advertising, brand development, sales, customer service, cloud computing, customer information, customer relationship management, employee
efficiency, and security and authentication; platform as a service (PaaS) featuring computer software platforms in the nature of a database for compiling data, customer data and customer interactions for enabling marketers to plan, personalize, optimize and customize communications with
customers throughout the marketing, sales, and service lifecycle; platform as a service (PaaS) featuring computer software platforms for retrieving, tracking, analyzing, testing, measuring and
managing data, customer data and customer interactions in the fields of business, marketing, advertising, brand development, sales, customer service, cloud computing, customer information, customer
relationship management, employee efficiency, and security and authentication; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan, personalize,
optimize, monitor, analyze and measure customer interactions across channels and devices; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan,
personalize, optimize, monitor, analyze and measure customer interactions across social media, customer relationship management (CRM) systems, point-of-sale systems, web analytics, web posts, email
and mobile devices; providing temporary use of online non-downloadable software for the optimization of online websites for third parties for marketing purposes; consulting services in the field of
providing online, non-downloadable software and applications; providing temporary use of on-line non-downloadable software for creating and customizing computer and mobile application software
functionality, integrating data, and automating business processes; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for
others, and consulting services related thereto; technical research in the field of designing and developing computers and computer software systems for use in connection with automated business
processes, business development tools, and business and data analytics; information technology consulting services; installation of computer software; computer system design and analysis; data
conversion of computer programs and data, not physical conversion; maintenance of computer software; monitoring of computer systems by remote access to ensure proper
functioning; rental of computer software and web servers; scientific and technological services, namely, research and design in the field of computer software design and development; industry
analysis and research services in the field of computer and mobile application software development; design and development of computer software; computer software consultancy; computer system design
and analysis, namely, designing of computer systems for posting images, links, videos, text and other brand content, for retrieving, sorting, filtering and moderating user generated content and
online communications, for managing brand content on social media websites and social networks, and for analyzing, retrieving and managing the performance of brand engagement; creating and
maintaining web sites for others; providing search engines for the internet; styling services, namely, website and mobile application software design services; web site design
consultancy; providing temporary use of online non-downloadable software for generating embeddable code for websites, for the purpose of creating, customizing, deploying, scheduling, tracking,
analyzing and managing online content on users' websites, on social media websites and other online forums, and for analyzing, monitoring and managing the performance of brand engagement of others;
providing temporary use of online non-downloadable software for creating and deploying customized interactive content on social profiles; conducting technical project feasibility studies being technical research in the field of computer software design and development; quality control, namely, computer monitoring service which tracks application software performance,
performs periodic software maintenance and provides reports and alerts concerning such performance; recovery of computer data; research and development of new products for others; server hosting;
providing non-downloadable software for monitoring of social network sites and online content for others for the purpose of monitoring, analyzing, testing, and reporting about brand content on social
media websites and social networks, and about the performance of online brand engagement; providing temporary use of on-line non-downloadable software development tools for the creation of mobile
internet applications and client interfaces; providing temporary use of on-line non-downloadable cloud computing software for providing business data analytics, business analytics, business
intelligence and for collecting and analyzing business data”
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Generally, any deleted 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
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two (2) classes; however, applicant submitted a fee(s) sufficient for only one (1) class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is not acceptable for any international class. See more information about specimens.
Examples of specimens. 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).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
REQUIREMENT – TEAS PLUS STATUS LOST
Processing fee required. Applicant must submit an additional processing fee of $100 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §2.22(a)(7), (c); TMEP §§819.01(g), 819.04. Specifically, the application did not include only identifications of goods and/or services from the U.S. Acceptable Identification of Goods and Services Manual. TMEP §819.01(g); see 37 C.F.R §2.22(a)(7).
In this case, the application identified one or more services from the ID Manual that used a fill-in-the-blank format. However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the selected services. By inserting inappropriate wording, applicant has, in effect, failed to submit an identification from the ID Manual and thus did not satisfy this application filing requirement. See 37 C.F.R §2.22(a)(7); TMEP §819.01(g).
The additional processing fee is required regardless of whether applicant satisfies this requirement by deleting the unacceptable wording in the identification. TMEP §819.01(g).
Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application.
CONCLUSION
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.
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action.
/Jillian Renee Burch/
Trademark Examining Attorney
Law Office 128
571-272-3384
jillian.burch@uspto.gov
RESPONSE GUIDANCE
