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. 79305167
Mark: BIGO
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Correspondence Address: |
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Applicant: BIGO TECHNOLOGY PTE. LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1577689
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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).
PRIOR PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
This requirement applies to both classes.
With respect to Class 42, applicant must add clarifying language about the hosting and monitoring services to make clear the nature of the goods. Applicant must also state the function of the cloud, SAAS and PAAS services. 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).
Further, applicant must make clear that the information technology services are consulting services.
Applicant may adopt the following identification, if accurate:
Class 36: Banking; capital investment; charitable fund raising; debt collection agency services; electronic
funds transfer; exchanging money; financial evaluation for insurance purposes [insurance, banking, real estate]; financial management; financial
analysis; financial consultancy; financial research; financing services; insurance brokerage; investment of funds; financing of loans [financing];
online banking; real estate agency services; trusteeship representatives; e-wallet payment services in the nature of processing of electronic wallet
payments; processing of electronic credit card transactions.
Class 42: Recovery of computer data; hosting the websites of others computer sites [web sites]; computer
security consultancy; computer technology consultancy; computer software consultancy; installation of computer software; design and development of computer software; upgrading and maintenance of
computer software; user authentication services using technology for e-commerce transactions; computer virus protection services; monitoring of computer systems by remote access to
ensure proper functioning; consultancy in the design and development of computer hardware; conversion of computer programs and data, other than physical conversion; electronic data storage;
off-site data backup; cloud computing featuring software for use {specify function of programs}; software as a service (SaaS) services featuring software for
{specify function of software}; platform as a service (PaaS) featuring computer software platforms for {specify function of the programs}; development of computer platforms;
creating and designing website-based indexes of information for others [information technology services]; server hosting; rental of web servers; design and development of
virtual reality software; providing information relating to computer technology and programming via a web site; design and development of electronic data security systems; data migration services;
database development services; development and creation of computer programmes for data processing; information technology consulting services provided on an outsourcing basis;
computer programming of video games; design and development of software for instant messaging; computer systems integration services; research in the field of artificial
intelligence.
Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted. See 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 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.
STANDARD CHARACTER MARK ADVISORY
A mark registered in standard characters, however, would provide protection of a text mark in any lettering style, size, and color. See 37 C.F.R. §2.52(a); TMEP §807.03(a). A mark in the international registration and corresponding U.S. application may meet the USPTO’s requirements for a standard character drawing even though no claim to standard characters was included in the application. TMEP §807.03(h). The absence of a standard character claim could be due to the differences in requirements for such claims in different countries. Id.
If applicant seeks to register the mark in standard characters in the United States, applicant must submit the following two statements:
(1) Under the laws of the country of the basic application and/or registration, the basic application and/or registration includes, and thus the international registration includes, the legal equivalent of a standard character claim.
(2) The mark consists of standard characters without claim to any particular font style, size, or color.
See 37 C.F.R. §2.52(a); TMEP §807.03(a), (h).
If applicant does not provide these two statements, the USPTO will consider the mark drawing to be in special form. See TMEP §807.03(h).
IN THE ALTERNATIVE, MARK DESCRIPTION REQUIRED
The following description is suggested, if accurate: The mark consists of the stylized wording “BIGO”.
REQUIREMENT – EMAIL
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
REQUIREMENT – U.S. ATTORNEY
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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).
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
HOW TO CONTACT & ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Tabitha Messick/
Tabitha L. Messick
Examining Attorney, Law Office 104
571-272-6585
tabitha.messick@uspto.gov
RESPONSE GUIDANCE