United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79272850
Mark: GIMP
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Correspondence Address: |
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Applicant: Gimp Foundation
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1500496
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
Introduction:
Search:
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).
Entity/citizenship:
US Attorney Required:
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
Identification of Goods/Services:
The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable. See id. Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Applicant may adopt the following identification, if accurate:
International Class 9:
Computer hardware; downloadable computer software for social networks and interaction with online communities; software development tools, namely, downloadable computer software development tools and Recorded computer software development tools; Downloadable and recorded computer software intended to be used as an application programming interface (API); application programming interfaces (API) intended for the creation of software applications, namely, downloadable application programming interface (API) software, downloadable application programming interface (API) software for {specify the function of the API programs, e.g., integration of video content into websites, etc.}, downloadable computer software for use as an application programming interface (API), recorded application programming interface (API) software, recorded computer software for use as an application programming interface (API); downloadable computer software for use as an application programming interface (API) for enabling online social networking, data retrieval, uploading, downloading, accessing and management of data; downloadable computer software for creating, managing and interacting with on-line communities; downloadable computer software enabling the creation, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, broadcasting, linking, expressing of sentiments, commenting, integrating, transmitting or sharing of information by any computer means or electronic media, the Internet and communication networks; downloadable computer software for enabling modification and facilitating the transmission of images, audio and audio-visual content as well as data and video content; downloadable computer for modifying photographs, images and audio, video and audiovisual content by means of filters with augmented reality effects, namely, graphics, animation, texts, drawings, geo-links, metadata, hyperlinks; downloadable computer software for data and information collection, management, editing, organization, modification, transmission, sharing and storage; downloadable computer software for sending and receiving electronic messages, email notification and alerts and reminders; downloadable computer search engine software for computers; downloadable computer software for third-party advertisement creation, management, measuring and dissemination; advertising servers, namely, computer servers for storing advertising and providing advertising on websites; downloadable augmented reality software for {indicate the function of the software, e.g., playing computer games, pilot training, medical teaching, etc.}; downloadable computer software for the integration of electronic data in real environments for entertainment, communications and social networks; downloadable computer software for enabling the development, evaluation, testing and maintenance of mobile software applications for portable electronic communication devices, namely, mobile telephones, smartphones, hand-held computers and tablets; downloadable computer software featuring an interpretation interface for facilitating human-machine interactions; downloadable tracking-based software and downloadable mobile application software for tracking, detection and location sharing; downloadable computer software for wireless provision of content, data and information in the field of (specify the field-specific, the content or field of use}; downloadable computer software enabling the access, display, editing, linking, sharing and provision of in any other electronic media, namely, (list the media which is connected) and information about (specify the field-specific, the content or field of use} via the Internet and communication networks; downloadable computer application software for mobile phones, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.} to use with social networking functions; downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content or field-specific, the content or field of use};downloadable computer software and downloadable mobile application software enabling the creation, management and access to groups in virtual communities; downloadable computer software for enabling the viewing and interacting with a stream of images, audio, audio-visual and video content, and processing data images, graphics and text; downloadable computer software for finding content and editors of content and for subscribing to content; downloadable computer software for the creation and management of user profiles and accounts in social media; interactive photographic and video apparatus, namely, electronic resistor cells and interactive photo kiosks for capturing, downloading, editing, uploading, printing and sharing of digital images and video for future use; downloadable computer software for enabling individuals, groups, companies and brands to create and maintain an online presence for marketing purposes; downloadable computer software for enabling advertisers to communicate and interact with online communities; downloadable computer software for the streaming of multimedia entertainment content; downloadable computer software for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc., and indicate the content or field of use, if the goods are content- or field-specific}; downloadable computer software for sending and receiving electronic messages, graphics, images, audio and audiovisual content via the Internet and communication networks; downloadable computer software for processing images, graphics, audio, videos and text; messaging software.
International Class 42:
Hosting platforms, namely, providing a web hosting platform for creating virtual communities enabling registered users to organize groups, meetings and events, to participate in discussions and participate in social, business and community networks; computer services, namely, hosting online Internet facilities, namely, hosting an on-line community web site for third parties for organizing and conducting meetings, events and interactive discussions via the Internet and communication networks; providing a website featuring on-line non-downloadable software that enables users to create electronic profiles personalized for people, groups and web pages featuring information defined or specified by the user, featuring sound, videos, images, text, content and data; computer services, namely, providing search engines enabling the retrieval of data via the Internet and in communication networks; hosting online facilities, namely, hosting an online website for the participation in social networks and management of user accounts in social media; providing a web site featuring temporary use of non-downloadable software for social networking, creating a virtual community and transmission of sound, videos, images, text, content and data; application service provider services, namely, hosting third-party computer software applications of others; software as a service (SaaS) featuring software for sending and receiving electronic messages, notifications and alerts; providing temporary use of non-downloadable software for the design, management, measurement, analysis, dissemination and distribution and measurement of results of advertising for third parties; hosting of online promotional advertising platforms, namely, providing online non-downloadable software enabling buyers and sellers of online advertising to purchase and sell an inventory of advertising; application service provider (ASP) services featuring software intended for the purchase, sale, design, management, tracking, evaluation, optimizing, aligning, analyzing, delivery and creation of reports on online advertising and marketing; creating and updating online pages, namely, creating websites and interfaces for mobile applications enabling users to upload, modify and share augmented reality content, information, experiences and data; providing temporary use of non-downloadable software to enable the development, assessment, testing and maintenance of mobile software applications for portable computer devices, namely, mobile telephones, smartphones, hand-held computers and tablets; providing temporary use of non-downloadable software for processing electronic payments; application service provider featuring application programming interface (API) software to use in electronic messaging and in the transfer of audio content, video, images, text, content and data; providing temporary use of non-downloadable electronic messaging software; providing temporary use of non-downloadable software for sharing and displaying user location, activity planning with the other users and providing recommendations; application service provider (ASP) services featuring software enabling or facilitating the sharing and viewing of user location, activity planning with other users and providing recommendations; providing temporary use of non-downloadable software based on relocation for research, determining and sharing of the location of products, services and events of interest; application service provider (ASP) services featuring software based on the location for research, determining and sharing of the location of products, services and events of interest; platform as a service (PAAS) featuring computer software platforms intended for the purchase and distribution of advertising; providing temporary use of non-downloadable software for modifying photographs, images and audio, video and audio-video content by means of photographic filters and augmented reality effects, namely, graphics, animation, text, pictures, geotags, metadata tags, hyperlinks; providing temporary use of non-downloadable software for displaying and interacting with a stream of electronic media, namely, images, audiovisual and video content, streaming of live videos, comments, advertisements, news and Internet links; providing temporary use of non-downloadable software for content retrieval and editors of content and subscribing to content; providing temporary use of non-downloadable software for the organization of images, video and audiovisual content using metadata tags; application service provider (ASP) services featuring software for social networks, social networks content management, the creation of a virtual community and the transmission of images, video and audiovisual content, photographs, videos, data, text, information, advertisements, advertising communication in the media and information; application service provider (ASP) services featuring application programming interface (API) software enabling social networking services and online software applications development; platform as a service (PAAS) with software platforms for social networks, content management on social networks, creating and transmitting virtual communities, video and audiovisual content, photographs, videos, data, text, news, advertising, advertising communication and information; rental of software enabling users to upload, edit and share images, videos and audiovisual content; computer services, namely, maintenance of computer software relating to advertising content and personalized online advertisements; and creation of social media feeds, namely, creating customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites; providing temporary use of non-downloadable computer software for photographing and recording of audio, audiovisual and video content; providing temporary use of non-downloadable computer software for uploading, downloading, storage, facilitating the transmission and sharing of images, audio-visual and video content and related text and data; providing temporary use of non-downloadable computer software for the streaming of multimedia entertainment; providing temporary use of non-downloadable computer software for creating and maintaining an online presence for individuals, groups, businesses and brands; providing temporary use of non-downloadable computer software for advertisers to communicate and interact with online communities; providing temporary use of non-downloadable computer software for taking and editing photographs, as well as for the recording and modification of videos; application service provider (ASP) services featuring software enabling or facilitating the taking and processing of photographs, as well as recording and editing of videos; computer software development; online provision of non-downloadable software, namely, providing a website featuring resources, namely, non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; application service provider (ASP) featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use}; computer services, namely, hosting an interactive web site that allows users to download, modify and share audio and video files, photographic images, text, graphics and data.
For assistance regarding an acceptable listing of goods and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Recitation and Identification Amendment Advisory:
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
/ LDA/
Lourdes Ayala,
Attorney at Law
Law Office 106
Telephone Number 571-272-9316
Lourdes.Ayala@uspto.gov
RESPONSE GUIDANCE