To:
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`Subject:
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`Sent:
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`Sent As:
`
`Attachments:
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`ME to WE Social Enterprises Inc. (jhiney@mccarter.com)
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`U.S. TRADEMARK APPLICATION NO. 87606678 - WE IMPACT - 128199-10009
`
`12/19/2017 5:29:04 PM
`
`ECOM112@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*87606678*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   87606678
`
`           
`
`MARK: WE IMPACT
`
`CORRESPONDENT
`ADDRESS:
`  
`       JESSICA HINEY
`  
`       MCCARTER &
`ENGLISH, LLP
`         825 EIGHTH
`AVENUE, 31ST FLOOR
`           NEW YORK, NY
`10019
`    
`   
`APPLICANT: ME to
`WE Social Enterprises
`Inc.
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
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`  128199-10009
`CORRESPONDENT
`
`E-MAIL ADDRESS:       
`
`jhiney@mccarter.com
`
`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: 12/19/2017
`
`The assigned trademark examining attorney has reviewed the referenced application and
`has determined the following:
`
`Search Results
`
`The Office records 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.
`
`Section 1(b) and Section 44(d) with Intent to Perfect 44(e)
`
`The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a
`foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been
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`provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.   See 15 U.S.C.
`§1126(e).
`
`An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an
`applicant’s country of origin.   15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country
`of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal
`registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
`
`Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.   TMEP
`§1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property
`office in applicant’s country of origin.   TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol
`certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of
`the international registration has been extended to applicant’s country of origin.   TMEP §1016.  In addition, applicant must also provide an
`English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should
`be signed by the translator.  TMEP §1004.01(b).
`
`If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English
`translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until
`a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).
`
`If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based
`solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although
`the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See
`15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section
`44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e)
`
`basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).  
`
`Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b)
`basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37
`C.F.R. §2.34(a)(3); TMEP §806.01(d).
`
`Identification of Services
`
`The identification of services is unacceptable as indefinite.  The applicant must clarify the identification of services by specifying what is meant
`by “providing customers using applicant's services or the services of third parties with loyalty points for redemption” because this description is
`overly broad and potentially misclassified.  See TMEP §1402.01.
`
`**Please Note: Suggested Acceptable Descriptions appear in Bold/Italicized font.  Unacceptable descriptions appear Underlined/Bold.
`
`Applicant may adopt the following identification, if accurate:
`
`International Class 35: Providing incentive award programs for customers using applicant's services or the services of third parties featuring
`the issuance and processing of loyalty points for redemption
`
`International Class 36: Charitable fundraising
`
`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).
`
`For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable
`Identification of Goods and Services Manual.  See TMEP §1402.04.
`
`Classification
`
`If applicant adopts the suggested amendment of the services, then applicant must amend the classification to International Classes 35 and/or 36. 
`See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
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`Multiple Class Application
`
`The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each
`international class based on Trademark Act Sections 1(b) and 44:
`
`(1)      
`
`(2)      
`
`List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest
`numbered class.
`
`Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule ).  The
`application identifies services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. 
`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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the
`Trademark Electronic Application System (TEAS) form.
`
`Fees
`
`The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more
`information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a
`higher fee using regular TEAS.
`
`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.     
`
`/Jay K Flowers/
`United States Patent and Trademark Office
`Trademark Examining Attorney
`Law Office 112
`571.272.8202
`jay.flowers@uspto.gov
`
`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
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`status, see http://www.uspto.gov/trademarks/process/status/.
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`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
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`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`ME to WE Social Enterprises Inc. (jhiney@mccarter.com)
`
`U.S. TRADEMARK APPLICATION NO. 87606678 - WE IMPACT - 128199-10009
`
`12/19/2017 5:29:06 PM
`
`ECOM112@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 12/19/2017 FOR U.S. APPLICATION SERIAL NO. 87606678
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 12/19/2017 (or sooner if specified in the Office action).  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.   For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead,
`the USPTO recommends that you respond online using the TEAS response form located at
`http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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