An Office Action is a response from the USPTO, by an Examining Attorney, after a new trademark application has been reviewed. By “new” I mean that it was filed approximately 3-4 months prior to the Office Action. The review that takes place at that time is the first real substantive step in the application process (there are other behind the scenes steps taken when the application is filed, coded, and put in to the USPTO databases and public records).

An Office Action can cover (a) procedural issues, and/or (b) substantive refusals. A single Office Action can cover numerous issues. Even an office action that only covers a single issue can be complex to review and respond to. An applicant has six months to respond to the first Office Action.

To demonstrate how complex and Office Action can be for the inexperienced, below is the langue from a recent Office Action that in essence only required a response to one relatively straightforward issue. The Office Action is more than 1,000 words and cites at least a dozen statutes or rules. And this Office Action covers only one procedural issue: the description and classification of services.

For applicant’s without attorneys, a proper response can be daunting. It certainly is possible to respond without an attorney, but the risks (of getting it wrong) and the time (to review and understand all the relevant rules and procedures) are significant if it is your first time. An improper or incomplete response can jeopardize the application, alter the protection available, or delay the application process. Of course, someone who has experience writing Office Actions as as USPTO employee, and sending thousands of responses on behalf of clients, has experience and skills that are invaluable to the trademark owner.

It would certainly be helpful if the USPTO could shorten the office actions (perhaps with links to the stock and standard explanations for those who need to read in more depth) and make them more “plain English.”

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 11/2/2017

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

The assigned examining attorney has reviewed the referenced application and determined the following.

SEARCH OF OFFICE RECORDS

A review of the merits of the application is deferred, and a search of the USPTO’s database of registered and pending marks is deferred in part, until applicant responds to this Office action by satisfying one of the following:

(1)       Specify the number of classes for which registration is sought and provide the filing fees for all such classes.

(2)       Delete class(es) from the application not covered by the fee(s) already submitted. 

See TMEP §§810.01, 1401.04. 

The application was filed online as a Trademark Electronic Application System (TEAS) Reduced Fee (RF) application and therefore the filing fee per class was $275.  See 37 C.F.R. §2.6(a)(1)(i)-(iii); TMEP §810.  The application identifies goods and/or services in at least 3 class(es), which require a total of fees in the amount of $825.  Applicant submitted $275 with the application.  The fee(s) submitted was sufficient for only 1 class. 

The Office records for International Class 25 have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

INFORMALITY

The applicant must respond to the following informality:

Identification and Classification of Goods and Services

The identification of goods and services is unacceptable as indefinite and because it may be properly classified in more than one International Class.  The applicant may adopt the following identification, if accurate: 

Home décor products, namely, furniture (in International Class 20);

Fashion and apparel products, namely, shorts, shirts, suits, pants and jackets (in International Class 25);

Online retail store services featuring home decor, fashion, and apparel products (in International Class 35).  TMEP §1402.01.

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 3 classes; however, applicant submitted a fee(s) sufficient for only 1 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

See 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.

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.  SeeTMEP §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).

Applicant’s Response

Guidelines for responding are set forth below. 

…..

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.


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