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:  June 04, 2021

 

 

 

The assigned trademark examining attorney has reviewed the referenced application.  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.

 

 

OFFICE SEARCH

 

A search of the USPTO database of registered and pending marks revealed 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:

• Requirement – Identification of Services; Amendment Required
• Requirement – Applicant's Domicile; Clarification Required
• Requirement – TEAS Plus Status Withdrawn; Additional Fees Required

 

 

I. IDENTIFICATION OF SERVICES

 

The identification in Class 25 is acceptable as submitted.

 

The wording “INSTAGRAM” in the identification of services is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the services.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration Nos. 4795634, 4863594, 4827509, 5566030 and 4170675. 

 

Identifications of goods and/or services should generally be comprised of generic wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

The wording “Education services, namely, providing live and on-line business development, marketing strategies and sales strategies in the field of business development, marketing strategies and sales strategies” in the identification of services is indefinite and must be clarified relative to the format and subject matter of the services .  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wordings "Entertainment services, namely, personal appearances by a [sic] entertainer, performer, Instagram celebrity and media celebrity; Entertainment services, namely, televised appearances by a [sic] entertainer, performer, Instagram celebrity and media celebrity" are indefinite and must be clarified with respect to the fields of service of the appearing individuals, in addition to substituting the registered mark therein with generic wording.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording "Hosting social entertainment events, namely, business development, marketing strategies and sales strategies, for others" must be clarified to indicate the nature of the events.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “Organizing, arranging, and conducting business development, marketing strategies and sales strategies events” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass special events for business purposes in Class 35, and conferences, congresses and symposia in Class 41.

 

The wording "Providing a website featuring blogs and non-downloadable publications in the nature of courses, workshops, classes, courses of instruction, webinars, training programs, seminars, educational conferences, educational exhibitions, and retreats in the field(s) of business development, marketing strategies and sales strategies" must be clarified relative to the nature of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording "Consulting services in the field of business development, marketing strategies and sales strategies training" could identify consulting services in the field of business in Class 35 and consulting in the field of training in Class 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The wording "Providing on-line digital publications in the nature of blogs, podcasts, websites and social media platforms in the field of business development, marketing strategies and sales strategies via the Internet" must be clarified with respect to the nature of the publications, and it may identify services for providing websites in the field of business in Class 35 as well as on-line non-downloadable publications in Class 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

Applicant may adopt the following amended identification, if accurate:

 

IC 025: Athletic tops; Head wear; Headwear; Headwear, namely, face masks; Hooded sweatshirts; Hooded sweatshirts for children, women, men and adults; Pullovers; Shirts; Shirts for children, women, men and adults; Sweatshirts; Sweatshirts for children, women, men and adults; T-shirts; T-shirts for children, women, men and adults; Tank-tops; Tank tops; Tops as clothing; Wearable garments and clothing, namely, shirts; Fleece pullovers; Graphic T-shirts; Hooded pullovers; Short-sleeved or long-sleeved t-shirts;

 

IC 035:  Organizing, arranging, and conducting special events for purposes of developing business, marketing strategies and sales strategies, for others; Providing a website in the field of business development, marketing strategies and sales strategies via the Internet and electronic social media platforms;

 

IC 041: Arranging and conducting educational conferences; Arranging of seminars; Arranging, organizing, conducting, and hosting social entertainment events; Arranging, conducting and organization of seminars; Business training; Business training in the field of business development, marketing strategies and sales strategies; Coaching in the field of business development, marketing strategies and sales strategies; Conducting workshops and seminars in business development, marketing strategies and sales strategies; Education services, namely, mentoring in the field of business development, marketing strategies and sales strategies; Education services, namely, providing live and on-line {specify nature of services, e.g., seminars, workshops, courses} business development, marketing strategies and sales strategies in the field of business development, marketing strategies and sales strategies; Education services, namely, providing non-downloadable webinars in the field of business development, marketing strategies and sales strategies; Education services, namely, providing on-line courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies; Education services, namely, providing courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies; Education services, namely, providing courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the fields of business development, marketing strategies and sales strategies; Education services, namely, one-on-one mentoring in the fields of business development, marketing strategies and sales strategies; Education services, namely, providing mentoring, tutoring, classes, seminars and workshops in the field of business development, marketing strategies and sales strategies; Educational services, namely, conducting courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the fields of business development, marketing strategies and sales strategies and distribution of training materials in connection therewith; Educational services, namely, conducting courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies and distribution of training material in connection therewith; Educational services, namely, conducting courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies; Educational services, namely, conducting courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies and distribution of course material in connection therewith; Educational services, namely, providing on-line courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies; Educational services, namely, providing educational speakers in the field of business development, marketing strategies and sales strategies; Educational services, namely, providing a continuing prerecorded audio program in the field of business development, marketing strategies and sales strategies accessible over the internet; Educational services, namely, providing online instruction in the field of business development, marketing strategies and sales strategies; Educational services, namely, providing courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the fields of business development, marketing strategies and sales strategies; Educational and entertainment services, namely, providing motivational speaking services in the field of business development, marketing strategies and sales strategies; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Educational and entertainment services, namely, providing motivational and educational speakers; Educational services, namely, conducting courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies and distribution of educational materials in connection therewith; Educational services, namely, conducting courses, workshops, classes, courses of instruction, webinars, training programs, seminars, and educational conferences in the field of business development, marketing strategies and sales strategies and distribution of course and educational materials in connection therewith; Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of business development, marketing strategies and sales strategies; Entertainment information; Entertainment services in the nature of arranging social entertainment events; Entertainment services in the nature of hosting social entertainment events; Entertainment services in the nature of organizing social entertainment events; Entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; Entertainment services, namely, providing podcasts in the field of business development, marketing strategies and sales strategies; Entertainment services, namely, providing video podcasts in the field of business development, marketing strategies and sales strategies; Entertainment services, namely, personal appearances by an entertainer, performer, internet Instagram celebrity and media celebrity in the fields of {specify fields, e.g., film, music, television, entertainment or sport}; Entertainment services, namely, televised appearances by an entertainer, performer, internet Instagram celebrity and media celebrity in the fields of {specify fields, e.g., film, music, television, entertainment or sport}; Hosting social entertainment events, namely, {indicate type of event, e.g., karaoke parties, birthday parties, etc.} business development, marketing strategies and sales strategies, for others; Life coaching services in the field of business development, marketing strategies and sales strategies; Membership club services, namely, providing training to members in the field of business development, marketing strategies and sales strategies; On-line journals, namely, blogs featuring business development, marketing strategies and sales strategies; On-line video journals, namely, vlogs featuring nondownloadable videos in the field of business development, marketing strategies and sales strategies; Organization of seminars; Organizing, arranging, and conducting events in the nature of conferences, congresses and symposia in the fields of business development, marketing strategies and sales strategies events; Peer to peer coaching services in the field of business development, marketing strategies and sales strategies; Personal coaching services in the field of business development, marketing strategies and sales strategies; Providing group coaching in the field of business development, marketing strategies and sales strategies; Providing a website featuring blogs and non-downloadable publications in the nature of {specify types of publications, e.g., books, magazines, newsletters} courses, workshops, classes, courses of instruction, webinars, training programs, seminars, educational conferences, educational exhibitions, and retreats in the field(s) of business development, marketing strategies and sales strategies; Workshops and seminars in the field of business development, marketing strategies and sales strategies; Consulting services relating to training in the field of business development, marketing strategies and sales strategies training; Educational services, namely, conducting seminars, lectures, teleseminars, teleclasses, and workshops in personal awareness; Entertainment services, namely, an ongoing series featuring business development, marketing strategies and sales strategies provided through blogs, podcasts, websites and social media platforms; Entertainment services, namely, providing webcasts in the field of business development, marketing strategies and sales strategies; Entertainment services, namely, providing ongoing webisodes featuring business development, marketing strategies and sales strategies via a global computer network; Leadership development training in the field of business development, marketing strategies and sales strategies; Professional coaching services in the field of business development, marketing strategies and sales strategies; Providing on-line digital publications in the nature of {specify types of publications, e.g., books, magazines, newsletters} blogs, podcasts, websites and social media platforms in the field of business development, marketing strategies and sales strategies via the Internet and electronic social media platforms; Providing on-line journals, namely, blogs in the field of business development, marketing strategies and sales strategies, via the Internet and electronic social media platforms; Providing podcasts in the field of business development, marketing strategies and sales strategies, via the Internet and electronic social media platforms; Providing on-line videos featuring business development, marketing strategies and sales strategies, not downloadable; Providing on-line tutorial videos in the field of business development, marketing strategies and sales strategies, not downloadable; Providing a website featuring non-downloadable audio recordings in the field of business development, marketing strategies and sales strategies; Providing a website featuring non-downloadable photographs; Providing a website featuring non-downloadable photographs in the field of business development, marketing strategies and sales strategies; Providing a website featuring non-downloadable videos in the field of business development, marketing strategies and sales strategies; Providing on-line training courses, workshops, classes, courses of instruction, webinars, training programs, seminars, educational conferences, educational exhibitions, and retreats in the field of business development, marketing strategies and sales strategies; Providing on-line publications in the nature of e-books in the field of business development, marketing strategies and sales strategies; Providing online non-downloadable journals in the field of business development, marketing strategies and sales strategies; Providing online non-downloadable visual and audio recordings featuring business development, marketing strategies and sales strategies; Providing online non-downloadable e-books in the field of business development, marketing strategies and sales strategies; Providing online non-downloadable tutorial e-books in the field of business development, marketing strategies and sales strategies

 

(Suggested additions are underscored; suggested deletions are stricken.)

 

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.

 

If the application is amended to add a class, 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 fees already paid (view the USPTO’s current fee schedule).  Filing fees for two classes have been paid in this application.  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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

II. APPLICANT'S DOMICILE

 

All applications must include the applicant’s domicile address, which is required for a complete application.  See 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189. 

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as an individual and specifies applicant’s domicile as “c/o” or in “care of” another party’s address.  In most cases, an address that is listed as “c/o” or in “care of” another party’s address is not acceptable as a domicile address because it does not identify the location of the place applicant resides and intends to be applicant’s principal home.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  In this case, although the "in care of" name is the same as the applicant, the indicated street address is that of counsel of record.  See the application and attached evidence from counsel's website.  Thus, applicant must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile.  Examination Guide 4-19, at I.A.3.

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.

 

To provide applicant’s domicile street address.  After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.  Information provided in the TEAS response form will be publicly viewable. 

 

If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address.  In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:

 

(1)        First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)        Use the radio buttons to select “Attorney” for the role of the person submitting the form;

(b)        Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)        On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)       On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

(2)        Then submit a TEAS response form to indicate the domicile address has been changed.  Open the form and

(a)        Answer “yes” to wizard question #3 and click “Continue;”

(b)        Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form. 

 

 

III. TEAS PLUS STATUS WITHDRAWN

 

Processing fee required.  Applicant must submit an additional processing fee of $100 per class because the application as originally filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.04.  Specifically, applicant failed to meet the following requirement:  the services were not correctly classified because a fill-in-the-blank element in the identification included wording that is clearly inappropriate or unrelated to the selected services. 

 

Applicant also identified one or more services from the ID Manual that used a fill-in-the-blank format where 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 these application requirements.

 

Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application.  See 37 C.F.R. §2.22(c); TMEP §819.04.

 

 

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 issues 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.    

 

 

/Betty Chang/

Examining Attorney

Law Office 115

571-272-6517

betty.chang@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 June 04, 2021 for

U.S. Trademark Application Serial No. 90381380

 

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. 

 

 

/Betty Chang/

Examining Attorney

Law Office 115

571-272-6517

betty.chang@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 June 04, 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.”