Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  September 09, 2021

 

 

 

This Office action is in response to applicant’s communication filed on August 4, 2021.

 

The applicant has proposed an amendment to the recitation of services.  The proposed amendment to the recitation of services is unacceptable.

 

The following requirements are now made FINAL:  the requirement to amend the recitation of services.  See 37 C.F.R. §2.63(b).

 

 

FINAL – RECITATION OF SERVICES

 

The identification of services is indefinite and must be clarified because the amendment includes the term “sales,” includes services in more than one international class of services that are beyond the scope of the original recitation, and does not clearly identify the services.  See suggestions highlighted below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

The identification for “sales” in International Class 36 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” normally refers to selling one’s own goods or services and is not a registrable service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.

 

Therefore, applicant must delete “sales” from the identification and indicate with greater specificity the nature of the service in International Class 35.

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows:  “insurance services” and “financial wellness.”

 

However, the proposed amendment identifies the following goods and/or services:  “insurance services, namely, the … education … of life insurance and life insurance-based investment products” and “insurance services, namely, the administration, education, and sale of life insurance and life insurance-based investment products.” 

 

This portion of the proposed amendment is beyond the scope of the original identification because the applicant’s services included insurance and financial services, not educational services. In addition, educational services are classified in Class 41, not Class 36. 

 

Applicant may adopt the following wording, if accurate:

 

            Class 36

Financial services, namely, commodity investment advice, financial analysis and consultation, financial exchange, financial forecasting, financial investment in mutual funds, stocks and other securities for others, financial management, financial planning, financial portfolio management, fund investment consultation, investment advice, investment brokerage, investment consultation, and investment management for others; financial services in the nature of an investment security; mutual fund investment services; administration of employee benefit plans concerning insurance and finance, pension plans, retirement funds and deferred compensation plans; providing brokerage on behalf of participants in defined contribution plans, deferred compensation plans and individual retirement accounts for investment in mutual funds, stocks and other securities; providing financial information by electronic means about financial accounts, mutual funds, and retirement planning tools; providing financial information by an automated telephone system about financial accounts, mutual funds, and retirement planning tools; providing an online computer database featuring information concerning financial accounts, mutual funds, and retirement planning tools; providing financial planning information to state and local governments and their employees and to not-for-profit entities and their employees via the Internet; insurance services, namely, the administration of life insurance and life insurance-based investment products; insurance services namely, __________ [applicant must specify the type of financial services intended by the wording “education, and sale of life insurance and life insurance-based investment products, e.g., insurance brokerage of life insurance and life insurance-based investment products.  As discussed above, the term “sale” is unacceptable and must be deleted from the identification of services.  As for educational services, the applicant applied for insurance services, not for educational services.  Accordingly, the addition of the wording “education” to the applicant’s recitation is beyond the scope of the original listing of services and must be deleted] in the field of life insurance and life insurance-based investment products; financial wellness counseling in the field of financial advice, financial management, and financial consulting [financial education services is beyond the scope of the original application and must be deleted from the recitation]; and student loan services, namely, student loan payment planning and administration, in International Class 36.

 

 

TMEP §1402.01.

 

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.

 

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).

 

Accordingly, the requirement to amend the recitation of services is maintained and made FINAL.

 

 

PROPER RESPONSE TO FINAL REQUIREMENT – Partial Abandonment Advisory

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  “education, and sale” and “financial wellness education and counseling in the nature of financial education, financial advice, financial management, and financial consulting” in Class 36.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only:  Financial services, namely, commodity investment advice, financial analysis and consultation, financial exchange, financial forecasting, financial investment in mutual funds, stocks and other securities for others, financial management, financial planning, financial portfolio management, fund investment consultation, investment advice, investment brokerage, investment consultation, and investment management for others; financial services in the nature of an investment security; mutual fund investment services; administration of employee benefit plans concerning insurance and finance, pension plans, retirement funds and deferred compensation plans; providing brokerage on behalf of participants in defined contribution plans, deferred compensation plans and individual retirement accounts for investment in mutual funds, stocks and other securities; providing financial information by electronic means about financial accounts, mutual funds, and retirement planning tools; providing financial information by an automated telephone system about financial accounts, mutual funds, and retirement planning tools; providing an online computer database featuring information concerning financial accounts, mutual funds, and retirement planning tools; providing financial planning information to state and local governments and their employees and to not-for-profit entities and their employees via the Internet; insurance services, namely, the administration of life insurance and life insurance-based investment products; and student loan services, namely, student loan payment planning and administration, in Class 36.

 

 

 

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@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 September 09, 2021 for

U.S. Trademark Application Serial No. 90286717

 

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. 

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@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 September 09, 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.”