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.

 

ISSUE/MAILING DATE: 10/16/2012

 

 

 

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 of the Office Records

 

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).

 

Email or Telephone Response Suggested

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

Claim of Ownership of Prior Registration

 

If applicant owns U.S. Registration No. 3932707, then applicant must submit for the application record a claim of ownership of this registration.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registration.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registration:

 

Applicant is the owner of U.S. Registration No. 3932707.

 

Amended Description of the Mark Required

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the letters CI inside a shaded square with the left corner separated from the square into a broken off shaded triangle, representing a puzzle piece.

 

Identification of Goods and Services Amendment Required

 

The wording in the identification of goods and services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

With regard to the services, applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels or trade, and the intended consumer(s).  See TMEP §1402.01.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods and/or 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 adopt the following identification, if accurate.  Please note that the wording shown in BOLD format either replaces indefinite wording or indicates wording that would be acceptable.  The wording in BOLD also explains why certain language is unacceptable and how the applicant may amend the language to eliminate wording that is indefinite or broad, meaning that it expands the scope of the original identification.  Some of the BOLD wording corrects misspelled terms or adds or deletes punctuation, in which case the word before the punctuation or spelling change might be shown in BOLD as well.  The remaining terms not shown in BOLD are acceptable as submitted.

 

Class 9:  Multimedia goods, namely, prerecorded digital video discs and DVDs featuring subjects of general human interest in the fields of (specify the “human interest” subject matter, e.g., interpersonal communication skills; wilderness survival skills; educational courses dealing with business management; teenage issues); digital media, namely, downloadable audio and video files featuring subjects of general human interest in the fields of (specify the “human interest” subject matter, e.g., interpersonal communication skills; wilderness survival skills; educational courses dealing with business management; teenage issues);; downloadable webcasts and podcasts featuring subjects of general human interest in the fields of (specify the “human interest” subject matter, e.g., interpersonal communication skills; wilderness survival skills; educational courses dealing with business management; teenage issues); downloadable graphics for wireless devices; downloadable on-line discussion boards featuring subjects of general human interest in the fields of (specify the “human interest” subject matter, e.g., interpersonal communication skills; wilderness survival skills; educational courses dealing with business management; teenage issues).

 

Class 38:  Broadcasting services, namely, television broadcasting, video broadcasting, Internet broadcasting, cable television and radio broadcasting, digital broadcasting of radio and television, satellite broadcasting and audio broadcasting; over-the air, satellite and cable radio and television transmission services; electronic transmission of data via satellite; electronic transmission of data and documents via global and local computer networks; video-on-demand transmission services; providing online chat rooms and electronic bulletin boards for the electronic transmission of messages among users in the fields of broadcast entertainment, education, and general interest; broadband communications services, namely, satellite, cable television, and wireless network transmission of sounds, images, signals and data. 

 

Class 41:  Production and distribution of television programs; educational and entertainment services in the nature of on-going television programs featuring subjects of general human interest in the fields of (specify the “human interest” subject matter, e.g., interpersonal communication skills; television program syndication; educational and entertainment services in the nature of a multimedia program series featuring subjects of general human interest in the fields of (specify the “human interest” subject matter, e.g., interpersonal communication skills, website and distributed via various platforms across multiple forms of transmission media; entertainment services, namely, providing (specify the type of “entertainment programming”, e.g., a non-fiction television programming services in the fields of (specify the “human interest” subject matter, e.g., interpersonal communication skills) delivered by television, radio, satellite, wireless networks, and/or the internet.

 

Trade Significance Inquiry

 

Applicant must specify whether the wording “CI” has any significance in the relevant trade or industry or as applied to the goods/services described in the application, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §§808.01(a), 814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

Information Required

 

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI, 67 USPQ2d at 1701-02.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

 

 

/Barbara A. Gold, Esq./

U.S. Patent and Trademark Office

Law Office 106

571/ 272-9165

571/ 273-9106 (fax)

barbara.gold@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 10/16/2012 FOR

SERIAL NO. 85687199

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should 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 10/16/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.