United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1497119

 

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned.  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

• Amendment to Identification of Goods and Services Required
• U.S. Counsel Required

 

AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and services is indefinite and must be clarified because it does not make clear what the goods and/or services. 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 goods and services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Due to the length of the identification of goods and/or services and the extent of the suggested amendments, the trademark examining attorney has incorporated the suggested additional or amended wording that will clarify the indefinite entries below in bold.

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 44 for “psychiatric services.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant is reminded, in a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

International Class 09:            Downloadable podcasts; downloadable image files; downloadable electronic publications; Electronic publications sold and distributed online, namely, Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; printed publications in electronically readable form, namely, E-books featuring {indicate subject matter} recorded on computer media; Electronic database in the field of {indicate subject matter or field} recorded on computer media; Electronic publications, namely, {indicate specific type of publication, e.g., book, magazine, manual} featuring {indicate subject matter} recorded on computer media; Electronic publications in the nature of a weekly {indicate specific type of publication, e.g., book, magazine, manual} featuring {indicate subject matter} recorded on computer media; Downloadable electronic publications in the nature of a weekly {indicate specific nature of publication} in the field of {indicate subject matter of publication}; downloadable webcasts in the field of {indicate field or subject matter}

 

International Class 16:            printed matter, namely, advertising posters; printed monthly publications, namely, brochures, booklets, and teaching materials in the field of {indicate subject matter or field of printed publications and teaching materials}; printed periodical publications in the field of {indicate subject matter}; advertising material being printed matter, namely, advertising pamphlets; posters being printed matter; printed matter, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the field of {indicate subject matter}; printed matter for educational purposes, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the field of {indicate subject matter}; printed matter for instructional purposes, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the field of {indicate subject matter}; printed publications, namely, brochures, booklets, and teaching materials in the field of {indicate subject matter or field of printed publications and teaching materials}; educational materials in printed form in the field of {specify subject matter}; printed documents in the nature of printed pamphlets, brochures, manuals, books, booklets, leaflets, informational flyers, informational sheets and newsletters in the field of {indicate field or subject matter, e.g. pregnancy, bullying prevention, bicycle safety, etc.}

 

International Class 35:            Promoting the interests of {indicate specific group, e.g., persons with disabilities, farmers, etc.} by means of public advocacy; Commercial lobbying services; charitable services, namely, organizing and conducting volunteer programs and community service projects

 

International Class 41:            Advisory services relating to education, namely, indicate nature of advice e.g., providing advice and information in the field of educational and entertainment activities and events for children}; consultancy services relating to education; consultancy services in the field of {specify, e.g., pet, business, etc.} training; dissemination of printed educational materials of others in the field of {indicate subject matter}; education advisory services, namely, providing advice concerning education options to pursue career opportunities; Providing information about education; education services in the nature of courses at the university level; educational advisory services, namely, {indicate type of educational advice}; providing educational assessment services; educational consultancy services, namely, consulting services in the field of higher education administration; Research in the field of education;  association services being the provision of training and educational classes in the field of {indicate subject matter of field} to members of the association; providing non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of information on a wide range of topics, available online and over a global computer network; educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the field of health; information services relating to education; providing information in the field of education; lifestyle counselling and consultancy, namely training in the fields of personal communication, self-awareness, personal performance and personal relationships; life coaching services in the field of {indicate field or subject matter}; management of education services, namely, {indicate nature of services e.g., developing educational curriculum for educators}; organization of educational events the field of {specify field, e.g., film, architecture, etc.} for cultural or educational purposes; medical education services, namely, providing continuing medical education courses; online electronic publication of news, namely, providing current event news via a global computer network; Charitable education and training services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops, etc.} in the field of {indicate subject matter or field}; organization of teaching activities,  namely, teacher training and workshops in the field of {indicate subject matter or field}; providing films, not downloadable, via video-on-demand services; providing online information in the field of  education, personal training, entertainment, sporting and cultural activities; providing online electronic publications, not downloadable, namely, providing online non-downloadable electronic books in the field of {indicate subject matter};Providing on-line videos featuring {indicate subject matter e.g., music, mathematics instruction, etc.}, not downloadable; provision of education courses in the field of {indicate subject matter or field}; provision of education services via an online forum, namely, providing online instruction in the field of {indicate subject matter or field}; publication of educational materials in the nature of text books; publication of multimedia material online in the nature of text books; publication of texts, other than publicity texts, namely, books; Education services, namely, mentoring in the field of {indicate subject matter or field}; publishing by electronic means; publishing of documents in the nature of books; publishing of printed matter; Education services, namely, mentoring in the field of {indicate subject matter or field}; conducting seminars in {indicate specific field, e.g. self-awareness, art appreciation}; conducting of educational courses in the field {indicate specific fields, e.g. computers, music, art}; Conducting training seminars in the field of {indicate specific field, e.g., pet care, math, tax preparation}; conducting workshops in the field of {indicate specific field, e.g., pet care, math, tax preparation}

 

International Class 42:            Scientific research relating to medicine; medical research; medical research in the nature of scientific research for medical purposes; pharmaceutical research services; preparation of reports relating to scientific research; providing online information, including about scientific and technological services and research and design relating thereto namely, {specify type of services, e.g., scientific research, analysis, testing, etc.} in the field of {indicate field or subject matter}; scientific research; scientific research relating to genetics; scientific research in the field of pharmacy; advisory services relating to scientific research; advisory services relating to science in the field of {indicate field or subject matter}; advisory services relating to scientific products; advisory services relating to the safety of products; laboratory research in the field of {indicate specific field, e.g. bacteriology, chemistry, cosmetics}  

 

International Class 44:            Advisory services relating to health; health counselling; medical clinic services; healthcare; counseling services in the fields of lifestyle wellness; Psychological counseling; medical advisory services; medical assistance; medical care services; medical counselling; preparation of psychological profiles for medical purposes; advisory services relating to medical problems, namely medical advisory services; preparation of reports relating to health care matters, namely, providing medical information to patients or medical professionals; preparation of reports relating to medical matters, namely, providing medical information to patients or medical professionals; preparing psychological profiles; providing online information in the field of medical services, and veterinary services; provision of health care services; provision of information relating to psychology; provision of information relating to medicine; provision of medical assistance; provision of medical information; psychiatric services; advisory services relating to medical services; psychological counselling; psychological or psychiatric counselling; advisory services relating to pharmaceutical products, namely medications; arranging of medical treatment; charitable services, namely, providing medical services to underserved communities; consultancy and advisory services in relation to medical services; health care; health care consultancy services in the field of {indicate health care-related field or subject matter, e.g., occupational therapy for persons with disabilities, etc.}

 

APPLICANT MUST BE REPRESENTED BY A U.S.-LICENSED ATTORNEY

 

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 an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  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.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

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.

 

 

 

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

 

 

/Kara E. Jackson/

Kara E. Jackson

Examining Attorney

Law Office 120

571-272-4358

Kara.Jackson@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.