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:  June 22, 2021

 

 

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 June 21, 2021, the examining attorney and Gail Nevius Abbas 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 Refusals and/or Requirements

 

The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.

 

n  Amend the description and classification of goods

n  Comply with classification requirements

 

GOODS

 

The identification for “general feature magazines; magazines in the fields of general interest, pop culture and fashion; books in the fields of fashion, beauty, music, entertainment and/or culture” in International Class 16 is indefinite and too broad and must be clarified because the wording does not make clear whether the “publications” are products or services and thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether the “magazines and books” identify print publications in International Class 16, electronic publications in International Class 9 or 41, and/or online/Internet publications in International Class 41, and amend the identification to provide the additional information specified below for such goods and services. 

 

If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications.  TMEP §§1402.03(e), 1402.07(b).  

 

If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See id.   Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  See TMEP §§1402.07(b), 1402.11(a)(x). 

 

The following are examples of acceptable formats for identifications for electronic or online/Internet publications (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or

 

Non-downloadable electronic publications in the nature of {indicate specific nature of publications} in the field of {indicate subject matter} in International Class 41. 

 

Applicant may adopt any or all of the following wording, if accurate. Suggested changes are in bold.

 

Class 9:           Downloadable electronic general feature magazines; Downloadable electronic magazines in the fields of general interest, pop culture and fashion; Downloadable electronic books in the fields of fashion, beauty, music, entertainment and/or culture; electronic general feature magazines recorded on computer media; electronic magazines in the fields of general interest, pop culture and fashion recorded on computer media; electronic books in the fields of fashion, beauty, music, entertainment and/or culture recorded on computer media;

 

 

 

Class 16:         printed general feature magazines; printed magazines in the fields of general interest, pop culture and fashion; printed books in the fields of fashion, beauty, music, entertainment and/or culture

 

Class 41:         providing online non-downloadable electronic general feature magazines; providing online non-downloadable electronic magazines in the fields of general interest, pop culture and fashion; providing online non-downloadable electronic books in the fields of fashion, beauty, music, entertainment and/or culture

 

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 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).

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to the International Class(es) above.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

MULTI-CLASS FILING 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 two classes; however, applicant submitted a fee(s) sufficient for only one 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.

 

FEES

 

The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application.  See 37 C.F.R. §2.6(a)(iii).  The fee for adding classes to a TEAS Standard application is $350 per class.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

 

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.

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@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 June 22, 2021 for

U.S. Trademark Application Serial No. 90453767

 

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. 

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@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 22, 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.”