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: 3/27/2013

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results – CLASS 009 and 041 ONLY

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

The filing dates of pending U.S. Application Serial Nos. 85138304 and 85106394 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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 marks in the referenced applications.  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.

 

However, applicant must respond to the following requirements.

 

Identification of Goods and Services

 

Applicant submitted the following identification of goods and services:

 

Class 009:        Computer software for processing, transmitting, receiving, compressing organizing, manipulating, streaming, playing, reviewing, and reproducing audio, video, image, graphics, text, and multimedia data; Computer software for transmitting digital signals, data, and electronic messages via wired and wireless networks; Computer software for access to the internet and hardware and network security; Downloadable movies, series, television programs, music, periodicals, and books; Electronic devices, namely, mobile phones, smartphones, tablets, digital media devices, and computers; accessories for mobile phones, namely, batteries, chargers, electric cigarette lighter adapters, hands-free headsets, carrying cases, and belt clips

 

Class 035:        Retail store services featuring electronic devices, namely, mobile phones, smartphones, tablets, digital media devices, and computers; Retail store services featuring accessories for mobile devices, namely, batteries, chargers, electric cigarette lighter adapters, hands-free headsets, carrying cases, and belt clips; Retail store services featuring telecommunication services, wireless phone services, messaging services, and internet service provider services

 

Class 038:        Audio, video, subscription television, and video-on-demand broadcasting, webcasting, streaming, and transmission via the Internet and electronic communications networks; Television broadcasting to mobile devices, namely mobile phones, smartphones, laptops, and tablets; telecommunication services, namely, transmission of voice, data, images, graphics, audio, video, and multimedia by means of wired and wireless networks; wireless phone and messaging services; Internet service provider services; providing access to a global computer network for internet browsing and messaging through a mobile device

 

Class 041:        Provision of non-downloadable movies and television programs via a video-ondemand service; Entertainment services in the nature of providing entertainment programs and content, namely, movies, series, and television programs, and clips in the fields of comedy, drama, action, variety, adventure, sports, musicals, current events, entertainment news, documentaries, and animation via the Internet and electronic communications networks; Providing an online forum for user-posted ratings, reviews, and recommendations on movies, series, television programs, events, and activities in the field of entertainment

 

Some of the wording in the identification of goods and services is indefinite and must be clarified because it is too broad and could include goods and services in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, in class 009, applicant must provide the subject matter of its “downloadable series”, “television programs” and periodicals.  Applicant must also further specify the nature of its downloadable music, tablets, media devices and chargers.

 

Applicant must also clarify “Retail store services featuring telecommunication services, wireless phone services, messaging services, and internet service provider services” in Class 035 because “retail” usually pertains to the sale of goods.  Does the retail store service feature service plans and activation?

 

Additionally, in class 038, applicant must specify the format of what’s being streamed, the nature of its transmission services, indicate that nature of its multimedia and messaging services.  Also, the services “Providing an online forum for user-posted ratings, reviews, and recommendations on movies, series, television programs, events, and activities in the field of entertainment” must be moved from class 041 to 038.

 

Lastly, applicant must further specify that its “series” and “television programs” are ongoing, and “clips” are “related film clips”.

 

Applicant may adopt any or all of the following wording, if accurate: 

 

Class 009:        Computer software for processing, transmitting, receiving, compressing organizing, manipulating, streaming, playing, reviewing, and reproducing audio, video, image, graphics, text, and multimedia data; Computer software for transmitting digital signals, data, and electronic messages via wired and wireless networks; Computer software for access to the internet and hardware and network security; Downloadable movies, series of fiction books, series of non-fiction books in the field of {indicate topic or field}, television programs about {indicate subject matter or field of pictures and shows}, music files, periodicals featuring {indicate subject matter}; Electronic devices, namely, mobile phones, smartphones, writing tablets, digital media streaming devices, and computers; accessories for mobile phones, namely, batteries, chargers for batteries, electric cigarette lighter adapters, hands-free headsets, carrying cases, and belt clips

 

Class 035:        Retail store services featuring electronic devices, namely, mobile phones, smartphones, tablets, digital media devices, and computers; Retail store services featuring accessories for mobile devices, namely, batteries, chargers, electric cigarette lighter adapters, hands-free headsets, carrying cases, and belt clips; Retail store services featuring telecommunications service plans and telecommunications service activation related to wireless phone services, messaging services, and internet service provider services

 

Class 038:        Audio, video, subscription television, and video-on-demand broadcasting, webcasting, streaming of {specify format, e.g., audio, video, audiovisual, etc.} material, and video-on-demand transmission services via the Internet and electronic communications networks; Television broadcasting to mobile devices, namely mobile phones, smartphones, laptops, and tablets; Telecommunication services, namely, transmission of voice, data, images, graphics, audio, video, and multimedia content by means of wired and wireless networks; wireless phone voice messaging services; text and numeric wireless digital messaging services; Internet service provider services; providing access to a global computer network for internet browsing and messaging through a mobile device; Providing an online forum for user-posted ratings, reviews, and recommendations on movies, series, television programs, events, and activities in the field of entertainment

 

Class 041:        Provision of non-downloadable movies and television programs via a video-on-demand service; Entertainment services in the nature of providing entertainment programs and content, namely, movies, on-going series, and on-going television programs, and related film clips in the fields of comedy, drama, action, variety, adventure, sports, musicals, current events, entertainment news, documentaries, and animation via the Internet and electronic communications networks

 

Scope Advisory

 

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 online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Claim of Ownership of Prior Registrations

 

If applicant owns U.S. Registration Nos. 1771243, 3666315, 1131418 and others (see attached), then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copies of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of these registrations:

 

Applicant is the owner of U.S. Registration Nos. 1771243, 3666315, 1131418 and others.

 

Conclusion

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/tfrazier/

Tamara Frazier

Trademark Attorney

Law Office 116

(571) 272-8256

tamara.frazier@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/27/2013 FOR U.S. APPLICATION SERIAL NO. 85842359

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 3/27/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.