UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

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: 5/22/2019

 

 

 

 

 

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 referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search Results Advisory

Note:  This is merely an advisory paragraph and not a requirement.

 

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).

 

PARTIAL Identification of Goods and/or Services Amendment Requirement

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141(f); 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

In an identification, an applicant must use the common commercial or generic name for the goods and/or services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP §§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the goods and/or services set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

The wording “Telecommunications” in the identification of goods and/or services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please see non-exhaustive suggestions below.

 

The following wording in the current identification is acceptable, because it is sufficiently definite and properly classified:

 

            International Class 38: . . . ; broadcasting, transmission, and streaming of voice, data, images, audio, video, multimedia, television, by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; subscription and pay-per-view broadcasting, transmission, and streaming services by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; video-on-demand transmission services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs; communication by computer; information, advisory and consultancy services relating to all the aforesaid 

 

Applicant may adopt the following identification of goods and/or services, if accurate (PLEASE SUBMIT YOUR AMENDED IDENTIFICATION IN STANDARD FONT; THE FONT STYLIZATION BELOW IS TO EMPHASIZE THE RECOMMENDED CHANGES ONLY):

 

            International Class 38: Telecommunications {insert common commercial names or purpose of telecommunications, e.g., “consultation” and/or “namely electronic messaging”}; broadcasting, transmission, and streaming of voice, data, images, audio, video, multimedia, television, by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; subscription and pay-per-view broadcasting, transmission, and streaming services by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; video-on-demand transmission services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs; communication by computer; information, advisory and consultancy services relating to all the aforesaid

 

See TMEP §1402.01.

 

            Amendment Guidelines

 

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 goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

(1)  Deleting the services to which the refusal pertains;

(2)  Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

(3)  Amending the basis for the services identified in the refusal, if appropriate.  TMEP §806.03(h).

If applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application: “Telecommunications”.  The application will then proceed with the following services only:

            International Class 38: . . . ; broadcasting, transmission, and streaming of voice, data, images, audio, video, multimedia, television, by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; subscription and pay-per-view broadcasting, transmission, and streaming services by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; video-on-demand transmission services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs; communication by computer; information, advisory and consultancy services relating to all the aforesaid 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

 

 

 

 

 

Applicant is encouraged to email or telephone the assigned trademark examining attorney to resolve the issue(s) 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.

 

Alternatively, applicant may expedite prosecution of this application by filing its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

 

 

/Tina H. Mai/

Trademark Examining Attorney

Law Office 117

571-272-4110

tina.mai@uspto.gov (for informal communications)

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/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.gov.uspto.report/.  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.gov.uspto.report/trademarks/process/status/.

 

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

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/22/2019 FOR U.S. APPLICATION SERIAL NO. 88353789

 

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 5/22/2019 (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.gov.uspto.report/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.gov.uspto.report/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.gov.uspto.report/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.gov.uspto.report/trademarks/solicitation_warnings.jsp.