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 29, 2022

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search of Office Database

 

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.

 

Refusal - Mark is Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a feature and purpose of applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

The applicant applied to register OUTREACH for “electronic downloadable publications, namely, analytical reports and studies in the field of customer information, customer relationship management, business management, business process improvement, employee efficiency, and organizational leadership; downloadable podcasts in the field of customer information, customer relationship management, business management, business process improvement, employee efficiency, and organizational leadership; application programming interface software” in International Class 9, “on-line business networking services; business information services, namely, providing reports used to identify business tasks suitable for automation; business management consulting relating to customer relationship management, sales support management, and business process automation; business information services, namely, management, tracking, and reporting of customer information relevant to sales calls and activities; business reporting services in the nature of preparing business reports, namely, preparation of summary notes, action items from business meetings, and reporting of results and content of meetings to meeting participants” in International Class 35, “educational services, namely, providing online non-downloadable videos and written course instruction materials in the field of business management; conducting business conferences, symposia, seminars, and training course in the fields of customer information, customer relationship management, business management, business process improvement, employee efficiency, and organizational leadership; publication of online blogs, magazines, books, newspapers, periodicals, pamphlets, brochures, manuals, informational flyers, informational sheets and newsletters; educational services, namely, training, testing and certification services in the field of systems administration and software user management” in International Class 41, and “online social networking services; providing a social networking website providing peer-to-peer connections for sales and marketing personnel” in International Class 45.

 

The attached evidence from The American Heritage Dictionary of the English Language defines “OUTREACH” as “to reach out” and “the act or process of reaching out.”  The word is merely descriptive because the applicant’s goods and services are for the purpose of reaching out to consumers.  Additionally, the examining attorney has attached excerpts from several websites located during a search of the Internet using the Google search engine.  This evidence demonstrates that “outreach marketing” is a term of art that is highly descriptive for a type of marketing involving reaching out to potential consumers, individuals and brands.  The applicant’s goods and services are in the field of “outreach marketing.”  Consumers encountering the applied-for mark in relation to the goods and services will immediately understand the descriptive nature of the mark in relation to those goods and services.

 

For the foregoing reasons registration is refused under Section 2(e)(1) of the Trademark Act.

 

Advisory – Supplemental Register

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Identification of Goods and Services

 

The identification of services in International Class 45 is acceptable.

 

International Class 9:

 

The identification for “application programming interface software” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable or recorded.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d). 

 

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §1401.03(d).  Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).

 

International Class 35:

 

The wording “business information services, namely, management, tracking, and reporting of customer information relevant to sales calls and activities” in the identification of services is indefinite and must be clarified because it does not identify the services with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the services after the word “namely” must further define the introductory wording that precedes “namely” using definite terms within the scope of the introductory wording.  In this case, the wording “management” and “tracking” appears to identify services outside the scope of the provision of business information.

 

International Class 41:

 

The wording “educational services, namely, providing online non-downloadable videos and written course instruction materials in the field of business management” in the identification of services for International Class 41 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 “downloadable educational course materials in the field of business management” in International Class 9, “printed correspondence course materials in the field of business management” in International Class 16, and “providing on-line non-downloadable electronic publications” in International Class 41. Additionally, the  provision of “online non-downloadable videos” does not identify an “educational service.”  The introductory language preceding the word “namely,” should be deleted as the provision of the videos does not identify a mode of instruction.

 

The wording “educational services, namely, training, testing and certification services in the field of systems administration and software user management” in the identification of services is indefinite and must be clarified because “certification” does not identify a service.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must specify whether it is providing “training for certification” or “educational examination for certification.”

 

The wording “educational services, namely, training, testing and certification services in the field of systems administration and software user management” in the identification of services for International Class 41 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 “providing training for certification” and “providing educational examination for certification” in International Class 41 and “testing, analysis and evaluation of the services of others to determine conformity with certification standards” in International Class 42.

 

Applicant should note that any wording in bold and in italics, 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.

 

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 adopt the following classification and identification, if accurate:

 

International Class 9: Electronic downloadable publications, namely, analytical reports and studies in the field of customer information, customer relationship management, business management, business process improvement, employee efficiency, and organizational leadership; downloadable podcasts in the field of customer information, customer relationship management, business management, business process improvement, employee efficiency, and organizational leadership; {specify, e.g., downloadable, recorded} application programming interface software; downloadable educational course materials in the field of business management

 

International Class 16: Printed correspondence course materials in the field of business management

 

International Class 35: On-line business networking services; business information services, namely, providing reports used to identify business tasks suitable for automation; business management consulting relating to customer relationship management, sales support management, and business process automation; business information services, namely, management, tracking, and reporting of customer information relevant to sales calls and activities; Business monitoring and consulting services, namely, tracking websites and applications of others to provide strategy, insight, marketing, sales, operation, particularly specializing in the use of analytic and statistical models for the understanding and predicting of consumers, businesses, and market trends and actions; business reporting services in the nature of preparing business reports, namely, preparation of summary notes, action items from business meetings, and reporting of results and content of meetings to meeting participants

 

International Class 41:  Educational services, namely, Providing online non-downloadable videos in the field of business management; providing online non-downloadable electronic publications in the nature of course instruction {indicate specific nature of publications, e.g., brochures, books} in the field of business management; conducting business conferences, symposia, seminars, and training course in the fields of customer information, customer relationship management, business management, business process improvement, employee efficiency, and organizational leadership; publication of online blogs, magazines, books, newspapers, periodicals, pamphlets, brochures, manuals, informational flyers, informational sheets and newsletters; educational services, namely, training, testing and {specify, e.g., training for, educational examination for} certification in the field of systems administration and software user management

 

International Class 42:  Application service provider featuring application programming interface software;  Testing, analysis and evaluation of the services of others to determine conformity with certification standards in the field of systems administration and software use management

 

International Class 45: Online social networking services; providing a social networking website providing peer-to-peer connections for sales and marketing personnel

 

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).

 

Multiple-Class Application Requirements

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(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 six classes; however, applicant submitted a fee(s) sufficient for only four classes.  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 acceptable for classes 9, 35, 41, and 45; and applicant needs a specimen for classes 16 and 42.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

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.

 

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.

 

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. 

 

An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Michael J.Souders/

Michael J. Souders

Examining Attorney

Law Office 115

571-272-9483

Michael.Souders@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 29, 2022 for

U.S. Trademark Application Serial No. 97304395

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·         Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.