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
INTERNATIONAL REGISTRATION NO. 1322311
STRICT
DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION
OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing
Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application
and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst
Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of
protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the
provisional full refusal.
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
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).
SUMMARY OF ISSUES:
- Clarification Needed: Foreign Applicant’s Entity Type Includes Limited Company but Applicant is Not from a
Commonwealth Country
- Clarification of the Identification of Goods/Services
I. CLARIFICATION NEEDED: FOREIGN APPLICANT’S ENTITY TYPE INCLUDES LIMITED COMPANY BUT APPLICANT IS NOT FROM A COMMONWEALTH COUNTRY
Applicant sets forth in the application the entity type
“limited company” and applicant’s address and/or country of organization as Israel. The designation “company” (or the abbreviation “co.”) or “limited company” is an
acceptable entity designation in a U.S. application for applicants from commonwealth countries. See TMEP §803.03(i). However, applicant has identified an address and/or country of organization that is not a commonwealth country (see http://www.thecommonwealth.org/Internal/142227/members/).
Therefore, applicant must specify the entity that would be the equivalent of a “limited company” in the
United States or provide a description of the nature of the foreign entity that is applying. See id.
II. CLARIFICATION OF THE IDENTIFICATION OF
GOODS/SERVICES
As filed, the identification of goods/services appears as follows:
- International Class 009: Computer
software media platform enabling e-commerce, maximization of media presentation and for saving media storage; computer software platform enabling users to create, author,
distribute, download, transmit, receive, play, edit, purchase, sell, extract, encode, decode, transcode, convert, display, store, and organize text, data, graphics, images, audio, video, and other
multimedia content; computer application software for sharing, publishing, uploading, displaying, viewing and transmitting digital content, namely, photos, videos, blog posts, and articles, to
wireless devices and communications networks; software and software applications to enable transmission, access, organization, and management of text messaging, instant messaging,
online blog journals, text, weblinks, and images via the Internet and other communications networks; downloadable software in the nature of a mobile application for social networking; downloadable software in the nature of a mobile application for real-lime delivery of data, messages, location, photographs, links, text and other data related thereto; downloadable
software to facilitate online advertising; software for making reservations for restaurants
- International Class 035: E-commerce services (terms considered too vague by the International Bureau - rule 13.2.b) of the Common Regulations); promoting the goods and services of others; operating on-line
marketplaces for sellers and buyers of goods and/or services; providing consumer information in the form of comments, ratings, reviews, referrals, recommendations, videos, photos,
images, notes and blog entries discussing prices, compilations, rankings, ratings, reviews, referrals, contact information, recommendations, deals, special offers, discounts and coupons in relation
to food, dining and drinking establishments, businesses, venues of all kinds, travel and holiday destinations, music events and performances, theatre and spoiling events and cultural events, via
global computer and communications networks and mobile applications {Indefinite/too broad – Does not adequately specify services in Class 035 and appears to include types of
services in other international classes, such as hotel and restaurant reviews of types in Class 043. As written, it is unclear that this entry relates to consumer information of types properly
classified in International Class 035. Applicant must amend to reference only consumer information services of types in Class 035 within the scope of the original language or delete this entry from
the identification}; providing product ratings of the consumer goods of others in the field of food, beverages, restaurants, travel, hotels, resorts, through a website; billing services;
e-billing; operating call centres for others
- International Class 036: Financial services; payment services
- International Class 038: Broadcasting services; mobile communication services, namely, mobile radio, telephonic, television, print, Internet, and multi-platform and multimedia communications;
providing online and telecommunication facilities for real-time interaction with other users of computers, mobile and handheld computers, and wired and wireless communication devices concerning
topics of general interest; transmission of interactive entertainment software; transmission of information via the Internet, television, and mobile phones; broadcasting by
television, radio and satellite; broadcasting and transmission of Internet programmes; message sending services via a website; electronic communication services, namely,
communication services by electronic computer terminals; electronic mail and messaging services
- International Class 039: Travel
services, making reservations for transportation, travel and touring services; provision of travel information; providing consultation related to making reservations for
transportation, and travel and tour ticket reservation
- International Class 042: Providing use of on-line software for event scheduling; software support services; software troubleshooting services; providing non-downloadable
computer application software enabling management of online waitlists in restaurants, reservations and customer loyalty programs; hosting non-downloadable blog postings, and digital
publications; platform as a service (PAAS) featuring computer software platforms for hosting an interactive websites that allow users to build an interactive marketplace; e-support services in the nature of computer software support services
- International Class 043: Making accommodation
reservations and bookings for others; providing personalized information about hotels and temporary accommodations for travel; providing on-line reviews of hotels; consultation
services related to making hotel reservations for others; making reservations and bookings for others for meals and for hotel, resort and restaurant services; on-line provision of information relating to restaurants and hotels
The above-bolded wording in the identification of goods
and/or services is indefinite and/or too broad and must be clarified because it does not adequately specify the type of applicant’s goods and the nature of applicant’s services within the particular
classification assigned by the International Bureau. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of
goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization (International Bureau) in the corresponding international
registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this
wording must identify goods and/or services in the particular classification assigned by the International Bureau for these goods and/or services.
The following substitute wording is suggested, if accurate:
- International Class 009: Computer software media platform for processing e-commerce transactions, for optimizing the quality of media presentation, and for saving media
storage; Computer software platform for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, purchasing, selling, extracting, encoding,
decoding, transcoding, converting, displaying, storing, and organizing text, data, graphics, images, audio, video, and other multimedia content; Computer application software for sharing,
publishing, uploading, displaying, viewing and transmitting digital content, namely, photos, videos, blog posts, and articles, to wireless devices and communications networks; Software and software applications for transmitting, accessing, organizing, and managing text messaging, instant messaging, online blog journals, text, weblinks, and images via the Internet
and other communications networks; downloadable software in the nature of a mobile application for social networking; Downloadable software in the nature of a mobile application
for real-time delivery of data, messages, location, photographs, links, text and other data related thereto; downloadable software to facilitate online advertising; software for making
reservations for restaurants
- International Class 035: E-commerce services, namely, {specify types in Class 035 only, e.g., providing
information about products via telecommunication networks for advertising and sales purposes}; Promoting the goods and services of others; Operating on-line marketplaces for sellers and
buyers of goods and/or services; Providing product ratings of the consumer goods of others in the field of food, beverages, restaurants, travel, hotels, resorts, through a website; billing services;
Billing, namely, electronic billing services; Operating telephone call centers for others
- International Class 036: Financial services, namely, {specify types in Class 036 only, e.g., financial advice, financial analysis, financial asset
management}; Bill payment services
- International Class 038: Broadcasting services, namely, {specify types in Class 038 only, e.g., television broadcasting, radio broadcasting, satellite
television broadcasting}; Mobile communication services, namely, mobile radio communication, communications by telephone, communications by television for meeting, Internet
communication in the nature of providing voice communication services over the Internet, and multi-platform and multimedia communications in the nature of {specify types in Class
038 only, e.g., simulcasting broadcast television of global communication networks, the Internet, and wireless networks}; Providing online and telecommunication facilities, namely, rental of
telecommunication facilities for real-time interaction with other users of computers, mobile and handheld computers, and wired and wireless communication devices concerning topics of general
interest; Electronic data transmission, namely, transmission of interactive entertainment software; transmission of information via the Internet, television, and mobile
phones; broadcasting by television, radio and satellite; broadcasting and transmission of Internet programmes; Message sending via a website; electronic communication services,
namely, communication services by electronic computer terminals; Electronic mail and messaging services, namely, electronic transmission of e-mail and electronic transmission of
messages
- International Class 039: Travel agency services, namely, making travel reservations for transportation and for transport services for sightseeing tours; Provision of
travel information; Consulting in the field of making travel reservations for transportation and for transport services for sightseeing tours
- International Class 042: Providing temporary use of on-line, non-downloadable software for event scheduling; Software support services, namely, technical
support services in the nature of troubleshooting of computer software problems; Technical support services, namely, troubleshooting of computer software problems; providing
non-downloadable computer application software enabling management of online waitlists in restaurants, reservations and customer loyalty programs; Hosting the websites of others on
the Internet, with said websites featuring non-downloadable blog postings and non-downloadable digital publications; Platform as a service (PAAS) featuring computer software platforms for hosting
an interactive websites that allow users to build an interactive marketplace; E-support services in the nature of computer software support services, namely, {specify types of
computer software support services in Class 042 only, e.g., diagnosis and repair of computer software problems
- International Class 043: Making accommodation reservations and bookings for others; Providing personalized information about hotels and temporary accommodations for travel; providing on-line
reviews of hotels; Consulting in the field of making hotel reservations for others; Making reservations and bookings for others for restaurants and meals;
Making reservations for others for accommodations at hotels and resort; On-line provision of information relating to restaurants and hotels, namely, restaurant information
services and information about hotel accommodations, not including hotel rate comparison information
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 narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06,
1904.02(c)(iv). 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 narrowed.
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). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited
by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be
changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a
multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP
§1401.03(d).
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.
RESPONSE GUIDELINES
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office
action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should
register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to
requirements and certain refusal response options, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application
record.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all
joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii);
TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.
37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S.
state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1,
11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic
signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the
signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP
§611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications,
authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP
§§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online
at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Kevin S. Corwin/
Trademark Examining Attorney
Law Office 112
571-270-1521 (Voice)
571-270-2521 (Fax)
Kevin.Corwin@uspto.gov
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.