Responding to a Trademark examiner

[chrisjchrisj]

I have applied for a US trademark and received a reply stating, essentially, that the trademark name for the services on the web site doesn't appear to match with the services claimed in "applicant’s identification". I believe that means I put down the wrong classification number.

I looked over the classification list again and want to respond to the examiner with the correct one, but have a few questions first.

If I reply with a different classification and the examiner doesn't think it's correct again, what happens next?

Is there a cost every time I submit a response?

Thanks, I look forward to being enlightened

 

[quincy]

I have applied for a US trademark and received a reply stating, essentially, that the trademark name for the services on the web site doesn't appear to match with the services claimed in "applicant’s identification". I believe that means I put down the wrong classification number.

I looked over the classification list again and want to respond to the examiner with the correct one, but have a few questions first.

If I reply with a different classification and the examiner doesn't think it's correct again, what happens next?

Is there a cost every time I submit a response?

Thanks, I look forward to being enlightened

Are you in the United States?

You should find a trademark attorney to assist you in selecting the proper classification for your goods/services. Picking the wrong classification is not an uncommon problem.

Good luck.

 

[chrisjchrisj]

Thanks for your reply.
Yes, I'm in the USA.
I'm sorry, but your suggestion to get an attorney is something I already understand is an option, but I thought I'd try this Forum first.
Neither of my questions have been answered, so if anyone else would like to help me with my questions, it would be greatly appreciated.
Thanks.

 

[quincy]

Thanks for your reply.
Yes, I'm in the USA.
I'm sorry, but your suggestion to get an attorney is something I already understand is an option, but I thought I'd try this Forum first.
Neither of my questions have been answered, so if anyone else would like to help me with my questions, it would be greatly appreciated.
Thanks.

Sorry. I was thinking the attorney I recommend you contact could answer your questions for you.

Without knowing any details, I can only guess at what the examiner was speaking when using the word "identification."

If the examiner was speaking of classification, the word classification typically would be used. If speaking of identification through description, the word description typically would be used. If speaking of the identification of the mark through its presentation, the examiner typically will use the word mark (or symbol or logo or design...).

In other words, if the mark you are registering seems to identify something other than what you are marketing on your website, the examiner in using the word "identification" could be referring to a problem with the classification or could be referring to a problem with the way you are describing your goods/services or could be referring to a problem with the appearance or use of the mark on your website as compared to how it is represented in your application.

Because it is hard from this distance to see what is causing problems with your application (at least based on what you have said so far), a personal review seems necessary to see if your application can be saved.

The USPTO can add additional fees, by the way, if when during the application examination, the USPTO decides requirements have not been met.

I will post back with a link to the Trademark Examiner's Manual, which might be of some assistance to you.

 

[chrisjchrisj]

Thanks for your informative reply. Much appreciated.

Regarding "I will assume that the examiner when speaking of "identification" was referring to the name and appearance of your mark and not the classification..."

Would that be something that could be asked of the examiner, to clarify, prior to providing the formal response (by the deadline)?

If my formal (deadline) response, doesn't finalize in awarding me the trademark, what happens next?

I look forward to any enlightenment. Much thanks again.

 

[quincy]

Thanks for your informative reply. Much appreciated.

Regarding "I will assume that the examiner when speaking of "identification" was referring to the name and appearance of your mark and not the classification..."

Would that be something that could be asked of the examiner, to clarify, prior to providing the formal response (by the deadline)?

If my formal (deadline) response, doesn't finalize in awarding me the trademark, what happens next?

I look forward to any enlightenment. Much thanks again.

Sorry. I wound up editing my previous post quite a bit. I decided not to make any assumptions because they could be wrong ones.

Clarification from the examiner is a good start.

Here is a link you can use to access the October 2017 USPTO Trademark Manual of Examining Procedure: https://www.uspto.gov/trademark/guides-and-manuals/tmep-archives

And here is a link on how to respond to a trademark office action: https://www.uspto.gov/trademarks-maintaining-trademark-registration/responding-office-actions

 

[chrisjchrisj]

Before I contact the examiner, here's more information, the reply from the examiner said, essentially, that the specimen doesn't show the mark associated with the services claimed in applicant’s identification, the specimen shows a website allowing users to upload media for entertainment purposes, but the applicant’s identification outlines a website allowing that function but for business purposes. So, does this mean I need to reply with a new classification?

 

[quincy]

Before I contact the examiner, here's more information, the reply from the examiner said, essentially, that the specimen doesn't show the mark associated with the services claimed in applicant’s identification, the specimen shows a website allowing users to upload media for entertainment purposes, but the applicant’s identification outlines a website allowing that function but for business purposes. So, does this mean I need to reply with a new classification?

I think you need to get clarification from the trademark examiner and/or have a trademark attorney in your area review your trademark claim and your application and then have this attorney help you comply with the trademark examiner's concerns before the deadline.

 

[chrisjchrisj]

Thanks for your reply, however, I am hoping for more advice than basically saying seek advice elsewhere. Of course I know I have those options, I'm looking for additional info. Does any one else respond on this forum?

 

[quincy]

Thanks for your reply, however, I am hoping for more advice than basically saying seek advice elsewhere. Of course I know I have those options, I'm looking for additional info. Does any one else respond on this forum?

Sure. Other people respond - but if they can see the problem with your application from this distance that I cannot see, I would be very surprised.

Your trademark application appears to have issues that require a personal review. You mentioned identification and classification and now you are speaking of the specimen you submitted. The specimen MUST show an actual example of your trademark used on your goods/services. It appears you have failed to do this.

No one on this forum or any other forum can provide you with a personal review and it is a personal review of your application and your trademarked goods/services and your website that is necessary to determine what the problem is with your application.

If you want to save your application from rejection, the advice stands to seek legal assistance in your area.

I don't know what else you can be told.