To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Roanhorse (privacy@trademarkengine.com)
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`U.S. TRADEMARK APPLICATION NO. 88013881 - ROANHORSE LLC - N/A
`
`10/24/2018 11:01:02 AM
`
`ECOM126@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION
`SERIAL NO.   88013881
`
`           
`
`MARK: ROANHORSE LLC
`
`CORRESPONDENT
`ADDRESS:
`  
`       ROANHORSE
`  
`       ROANHORSE
`         1632 E. 45TH ST.
`           TULSA, OK 74105
`    
`   
`APPLICANT: Roanhorse
`
`    
`
`*88013881*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`NO:       
`
`  N/A
`CORRESPONDENT E-
`
`   
`
`MAIL ADDRESS:       
`
`privacy@trademarkengine.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: 10/24/2018
`
`Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office
`action by examiner’s amendment.   Although the USPTO will not accept a formal response by e-mail, an applicant may communicate
`informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately
`place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.
`
`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.
`
`SUMMARY OF ISSUES:
`Identification of Goods
`Disclaimer
`Mark Description
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`SEARCH OF OFFICE’S DATABASE OF MARKS
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`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).
`
`IDENTIFICATION OF GOODS/SERVICES/GOODS AND SERVICES
`
`Applicant must clarify the wording “Software application for mobile devices to create address label formatting” in the identification of goods in
`International Class 9 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite
`because it does not clearly state the nature or function of the goods.  Further, this wording could identify goods or services in more than one
`international class.  For example, downloadable software is in International Class 9 and the service of providing temporary use of non-
`
`downloadable software is in International Class 42.  Thus, applicant must specify whether the software is downloadable.  
`
`Applicant may substitute the following wording, if accurate (changes shown in bold):
`
`Class 9:          
`
`Downloadable software in the nature of a mobile application for creating address label formatting.
`
`Class 42:       
`
`Providing temporary use of online non-downloadable software applications for mobile devices for creating address label
`formatting.
`
`Applicant may amend the identification 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.  Generally, any deleted goods
`and/or services may not later be reinserted.  See TMEP §1402.07(e).
`
`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.
`
`MULTIPLE-CLASS APPLICATION REQUIREMENTS
`
`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)      
`
`(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 goods and/or 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark
`Electronic Application System (TEAS) form.
`
`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.
`
`DISCLAIMER REQUIRED
`
`Applicant must disclaim the abbreviation “ LLC” because it designates the legal character or family business structure of an entity and does not
`indicate the source of applicant’s goods; thus, it is an unregistrable component of the mark.  See 15 U.S.C. §§1051-1053, 1056(a), 1127; In re
`Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB
`1998); TMEP §1213.03(d).
`
`Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations
`such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no
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`source-indicating capacity.  TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598,
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`602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.  
`
`An applicant may not claim exclusive rights to an unregistrable component of a mark, such as matter that designates an applicant’s business type
`or structure.  See 15 U.S.C. §1056(a); TMEP §1213.03(a), (b), (d).  A disclaimer of unregistrable matter does not affect the appearance of the
`mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d
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`978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  
`
`If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d
`1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
`
`Applicant should submit a disclaimer in the following standardized format:
`
`No claim is made to the exclusive right to use “LLC” apart from the mark as shown.
`
`For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application
`System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp.
`
`MARK DESCRIPTION
`
`The description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  Applications for marks not in
`standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the
`
`mark.  See 37 C.F.R. §2.37; TMEP §808.02.  
`
`Therefore, applicant must provide a more detailed description of the applied-for mark.  The following is suggested:
`
`The mark consists of a stylized design of a horse’s head depicted as negative space on shattered glass and the wording
`“ROANHORSE LLC” beneath the horse’s head .
`
`RESPONSE GUIDELINES  
`
`Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by
`examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone
`or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application
`in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.
`
`For this application to proceed further, applicant must explicitly address each requirement raised in this Office action.  To respond to
`requirements, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to
`USPTO Office actions, response options, and how to file a response online, see “ Responding to Office Actions” on the USPTO’s website.
`
`If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the
`application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP
`§§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R.
`§§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
`
`When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application,
`which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within
`two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System
`(TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail
`communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this
`Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 
`Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this
`Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02,
`709.06.
`
`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
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`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.     
`
`/Galina Gurok/
`Examining Attorney
`Law Office 126
`(571) 270-3589
`galina.gurok@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
`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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`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Roanhorse (privacy@trademarkengine.com)
`
`U.S. TRADEMARK APPLICATION NO. 88013881 - ROANHORSE LLC - N/A
`
`10/24/2018 11:01:04 AM
`
`ECOM126@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 10/24/2018 FOR U.S. APPLICATION SERIAL NO. 88013881
`
`Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an
`official letter to which you must respond.  Please follow these steps:
`
`(1)  READ THE LETTER by clicking on this link or going to http://tsdr.uspto.gov/, entering your U.S. application serial number, and clicking
`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)  RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from 10/24/2018, using the Trademark Electronic
`Application System (TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.  A response transmitted through
`TEAS must be received before midnight Eastern Time of the last day of the response period.
`
`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.  
`
`(3)  QUESTIONS about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your
`
`application, identified below.  
`
`/Galina Gurok/
`Examining Attorney
`Law Office 126
`(571) 270-3589
`galina.gurok@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
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`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.
`
`  
`