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: 10/31/2012

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

 

 

 

Search of 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).

 

However, the applicant should note the following informalities.

 

Summary of Issues

 

• Identification of Goods and Services
• Specimen Unacceptable

 

International Class 9

 

The wording “electronic publications, namely…online media and mobile apps” is unacceptable as indefinite because it does not identify actual goods in trade.  Online media and applications are not “electronic publications.”  The applicant must clarify the nature of the goods with respect to actual publications.

 

International Class 38

 

The wording “broadcasting of science, philosophy, and religion programs” is unacceptable as indefinite because it does not identify the nature of the broadcasting.  The applicant may amend as follows:  “broadcasting of ______[indicate specific type of program, e.g., cable television, television, radio, etc.] programs in the field of science, philosophy and religion.”

 

International Class 41

 

The wording “entertainment services, namely, an on-going series featuring science, philosophy and religion provided through magazines, books, online media, broadcast, cable and mobile app; entertainment services, namely, the provision of continuing programming featuring science, philosophy and religion delivered by magazines, books, online media, broadcast, cable and mobile app; entertainment, namely, a continuing science, philosophy and religion show broadcast over magazines, books, online media, broadcast, cable and mobile app” is unacceptable as indefinite because it does not identify the broadcast medium.  The applicant should note the following example:  “entertainment services, namely, an on-going series featuring _____[indicate subject matter] provided through ________[indicate broadcast medium, e.g., cable television, webcasts, radio broadcasts].”

 

The wording “providing a website featuring non-downloadable publications in the nature of magazines, books, online media and mobile app in the field of science, philosophy and religion;

providing a website featuring resources, namely, a website featuring primarily non-downloadable publications in the nature of magazines, books, online media and mobile app in the field of science, philosophy and religion and also featuring non-downloadable software for computer devices; providing a website featuring resources, namely, non-downloadable publications in the nature of magazines, books, online media and mobile app in the field of science, philosophy and religion; publication of magazines, books, online media and mobile app” is unacceptable because the wording “online media and mobile app” does not identify actual publications.  The applicant must delete the wording.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods 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.

 

Specimen Unacceptable

 

The specimen is not acceptable because it does not show the applied-for mark in use in commerce.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in actual use in commerce for each international class of goods and services identified in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  

 

The specimen is not acceptable as evidence of actual use because it does not show use of the mark on downloadable goods or magazines identified in International Class 9 and 16 respectively.  In addition, the specimen also fails to support the services identify because it show use of the mark for broadcast or entertainment services. 

 

Examples of the type of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages are acceptable specimens for goods when they include a picture or textual description of the goods closely associated with the mark and sufficient information to order those goods.  TMEP §904.03(i).  However, leaflets, handbills, advertising circulars, and other printed advertising material generally are not acceptable specimens to show use of the mark in connection with an applicant’s goods.  See TMEP §§904.03 et seq.

 

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

Therefore, applicant must satisfy one of the following, as appropriate:

 

(1)  Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows the mark in actual use in commerce for each international class identified in the application, notice of allowance, or allegation of use. 

 

(2)  Amend the filing basis to intent to use under Section 1(b), if the current filing basis is based on use in commerce under Section 1(a).  This will later necessitate additional fee(s) and filing requirements.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

 

 

 

 

/Stephanie M. Ali/

Trademark Examining Attorney

Law Office 109

571-272-9272 - phone

571-272-9109 - law office fax

stephanie.ali@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 TRADEMARK APPLICATION

Your trademark application (Serial No. 85653310) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 10/31/2012 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

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

 

2. Respond within 6 months, calculated from 10/31/2012 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Stephanie M. Ali/

Trademark Examining Attorney

Law Office 109

571-272-9272 - phone

571-272-9109 - law office fax

stephanie.ali@uspto.gov

WARNING

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

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, please use the Trademark Electronic Application System Response to Office Action form.