Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  April 09, 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.

 

USPTO database searched; no conflicting marks found.  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.

 

Applicant must address issues shown below.  On April 8, 2020, the examining attorney and Scott Sisun discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES:

 

• Identification of Goods and Services
• Advisory – Multi-Class Application Requirements

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The wording “Menstruation products, namely, tampons, pads, sanitary napkins; Downloadable application in the field of women's reproductive and menstruation health; software in the field of women's reproductive and menstruation health; online platform in the field of women's reproductive and menstruation health; non-downloadable software in the field of women's reproductive and menstruation health; providing a website in the field of women's reproductive and menstruation health” is unacceptable as indefinite, misclassified and overly broad for the following reasons:

 

1. Menstruation products, namely, tampons, pads, sanitary napkins is properly classified in Class 5.

 

2. Downloadable application in the field of women's reproductive and menstruation health is properly classified in Class 9 and applicant must specify the function of the software.

 

3. software in the field of women's reproductive and menstruation health is classified in Class 9 if downloadable and Class 42 is non-downloadable. Further, applicant must specify the function of the software.

 

4. online platform in the field of women's reproductive and menstruation health is classified in Class 42 and applicant must clarify how the services are provided, i.e. “platform as a service services featuring computer software platforms.” Further, applicant must specify the function of the software.

 

5. non-downloadable software in the field of women's reproductive and menstruation health is classified in Class 42 and applicant must specify the function of the software.

 

6. providing a website in the field of women's reproductive and menstruation health is classified in Class 44.

 

Applicant may adopt any or all of the following suggested amendment to the identification of goods:

 

-          International Class 3:                       Menstruation products, namely, tampons, pads, sanitary napkins; Downloadable application in the field of women's reproductive and menstruation health; software in the field of women's reproductive and menstruation health; online platform in the field of women's reproductive and menstruation health; non-downloadable software in the field of women's reproductive and menstruation health; providing a website in the field of women's reproductive and menstruation health

 

-          International Class 5:              Menstruation products, namely, tampons, pads, sanitary napkins

 

-          International Class 9:              Downloadable software application in the field of women's reproductive and menstruation health, namely, for {specify function, i.e. tracking reproductive and menstruation data}; {downloadable or recorded} software in the field of women's reproductive and menstruation health, namely, for {specify function, i.e. tracking reproductive and menstruation data}

 

-          International Class 42:            online non-downloadable software in the field of women's reproductive and menstruation health, namely, for {specify function, i.e. tracking reproductive and menstruation data}; platform as a service (PAAS) featuring computer software platforms in the field of women's reproductive and menstruation health, namely, for {specify function, i.e. tracking reproductive and menstruation data}; providing on-line non-downloadable software in the field of women's reproductive and menstruation health, namely, for {specify function, i.e. tracking reproductive and menstruation data}

 

-          International Class 44:            providing a website featuring information in the field of women’s reproductive and menstruation health

 

If applicant adopts the suggested amendment of the identification of goods and services, then applicant must amend the classification to add International Classes 5, 9, 42 and 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

ADVISORY - MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 4 classes; however, applicant submitted a fee 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.

 

 

RESPONSE GUIDELINES

 

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.

 

 

/Tara L. Bhupathi/

Examining Attorney

Law Office 124

(571) 272-5557

tara.bhupathi@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 April 09, 2021 for

U.S. Trademark Application Serial No. 90290515

 

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. 

 

 

/Tara L. Bhupathi/

Examining Attorney

Law Office 124

(571) 272-5557

tara.bhupathi@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 April 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.”