United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1633317

 

Notice of Provisional Partial 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 (see https://www.uspto.gov/trademarks-application-process/abandoned-applications for information on abandonment).  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at https://tsdr.uspto.gov/, 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 partial refusal.  This is a provisional partial 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).  This refusal applies to only the following services in International Class 35:

 

SEARCH RESULTS

 

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

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Anything in bold requires deletion or clarification. 

 

Class 35:  Systemization of information into computer databases; price comparison services; providing consumers with product recommendations for business purposes; sales promotion for others; provision of an online marketplace for buyers and sellers of goods and services; personnel recruitment; administrative processing of purchase orders; organization of exhibitions for commercial or advertising purposes; online advertising on a computer network; display goods and services electronically for TV shopping and home shopping; presentation of goods on communication media, for retail purposes; providing customers with information and advice on choosing to purchase products; marketing the goods and services of others; book-keeping   The identification of goods and/or services contains parentheses and brackets.  Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification.  See TMEP §§1402.04, 1402.12.  The only exception for including parenthetical information in identifications is 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).”  See TMEP §1402.12.   Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.   display goods and services electronically for TV shopping and home shopping; presentation of goods on communication media, for retail purposes; providing customers with information and advice on choosing to purchase products is not acceptable. Does applicant mean Providing television home shopping services in the field of general consumer merchandise is acceptable in Class 35.

 

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). 

 

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.

 

Failing to respond to this provisional refusal Office action will result in partial abandonment of the U.S. application.  If applicant does not respond within the six-month period, the goods identified above, to which this provisional refusal applies, will be deleted from the application.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

In such case, the application will then proceed only with the following services in International Class 35: Systemization of information into computer databases; price comparison services; providing consumers with product recommendations for business purposes; sales promotion for others; provision of an online marketplace for buyers and sellers of goods and services; personnel recruitment; administrative processing of purchase orders; organization of exhibitions for commercial or advertising purposes; online advertising on a computer network; marketing the goods and services of others; book-keeping

 

Who can sign the response. 

Applicant does not have a U.S.-licensed attorney.  The response must be signed by (1) the individual applicant, (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporation, or a general partner of a partnership), or (3) all joint applicants.  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.03(b). 

 

Applicant has a U.S.-licensed attorney.  The attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §712.01.  The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, and (2) Canadian trademark attorneys or agents reciprocally recognized (see https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-81040e3b-916b-4cf4-a81e-a2fad65829fb.html for information on reciprocal recognition) by the USPTO’s Office of Enrollment and Discipline (OED) to represent applicants located in Canada and who are working under a qualified U.S.-licensed attorney.  See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e); TMEP §602. 

 

 

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

 

 

/Jacqueline Abrams/

Examining Attorney LO 101

(571) 272-9185

United States Patent and Trademark Office

jacky.abrams@USPTO.gov (INFORMAL ONLY)

 

 

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.