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: 12/11/2013

 

 

 

 

 

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.

 

 

SUMMARY OF ISSUES that applicant must address:

 

• Identification of Goods and Services
• Ownership of Prior Registrations 
• Description of the Mark & Color Claim
• New Drawing Required – Pixelcount Low
• Specimen Refusal – No Use with Services (Class 45)

 

 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

 

IDENTIFICATION OF GOODS & SERVICES

 

            CLASS 9

 

The wording “OR” in the identification of goods is indefinite and must be amended to be definite through the use of the word AND in its place.  See TMEP §1402.01. Thus, the identification “Computer software to enable uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks” may be amended to the following, if accurate:

]

Computer software to enable uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing and otherwise providing electronic media and information via computer and communication networks

 

Applicant may adopt the following identification, if accurate.  See TMEP §1402.01. The bold language offers suggested amendments to the language in order to overcome the aforementioned issues and indefinitenesss.

 

Class 9:           Computer software to enable uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing and otherwise providing electronic media and information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; Computer search engine software; Computer software for accessing, browsing and searching online databases; Computer software for personal information management, and data synchronization software

 

            CLASS 35

 

The wording “information services” in the identification of services is indefinite and must be clarified because to be properly classified in Class 35, such information must relate to business matters.  See TMEP §1402.01.

 

Applicant may adopt the following identification, if accurate.  See TMEP §1402.01. The bold language offers suggested amendments to the language in order to overcome the aforementioned issues and indefinitenesss.

 

Class 35:         Marketing, advertising and promotion services; market research; information services relating to business matters; Promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of services and products of third parties via computer and communication networks; Online retail store services featuring gift cards and delivery of digital media, namely, pre-recorded music, video, images, text and audiovisual works; Providing online marketplaces for sellers of goods and/or services; Providing online facilities for connecting sellers with buyers; Providing online facilities featuring information for consumers in the field of gifts; Business networking

 

 

            CLASS 38

 

The purpose of the chatrooms and message boards must be made apparent, as outlined below in bold.

 

Applicant may adopt the following identification in Class 38, if accurate.  See TMEP §1402.01. The bold language offers suggested amendments to the language in order to overcome the aforementioned issues and indefinitenesss.

 

Class 38:         Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among internet users; Providing access to computer, electronic and online databases; Telecommunications services, namely electronic transmission of data, messages, graphics, images, audio, video and information; Providing online forums for communication on topics of general interest; Providing online chat rooms, email and instant messaging services, and electronic bulletin boards for {specify, e.g., transmission of messages among users in the field of general interest}; Audio, text and video broadcasting services over computer and other communication networks namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Voice over IP services; Telephony communication services

 

 

            CLASS 41

 

 

The wording “Providing computer, electronic and online databases in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups” in the identification of services is indefinite and must be clarified because it is not clear what “secondary” and “collegiate” are modifying.  See TMEP §1402.01.

 

Applicant may change this wording to “Providing computer, electronic and online databases in the field of entertainment and in the fields of secondary education, collegiate education, social and community interest groups,” if accurate.  See TMEP §1402.01.

 

The wording “Electronic journals and blogs, featuring user generated or specified content” in the identification of services is indefinite and must be clarified because Applicant must specify the content and/or subject fields of such journals/blogs.  See TMEP §1402.01.

 

Applicant may adopt the following identification, if accurate.  See TMEP §1402.01. The bold language offers suggested amendments to the language in order to overcome the aforementioned issues and indefinitenesss.

 

Class 41:         Providing computer, electronic and online databases in the field of entertainment and in the fields of secondary education, collegiate education, social and community interest groups; electronic journals  and blogs featuring user generated or specified content in the fields of {specify subject matter, i.e. baseball, social networking}; Publishing of electronic publications, for others; Entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer and communication networks; Providing information about online computer games and video games via computer and communication networks

 

 

            CLASS 42

 

The wording “facilities” in the identification of services is indefinite and must be clarified because it is not clear what Applicant intends by “facilities” and “online facilities”.  See TMEP §1402.01. Applicant may wish to amend to websites, if accurate, as indicated below in bold.

 

The wording “providing information from searchable indexes and databases of information,” is indefinite. Information services are classified according to the subject matter of the information provided. TMEP §1402.11(b). Following are examples of proper classification: “providing information pertaining to social networking” in International Class 45; “providing information regarding college admissions” in International Class 41; “providing information in the field of website design” in International Class 42. Therefore, the applicant must indicate the subject matter of the information being provided and properly classify the services accordingly. Further, the overbroad language INCLUDING must be replaced with NAMELY in order to be definite.

 

The wording “Providing search engines for obtaining data via communications networks” in the identification of goods is indefinite and must be clarified because Applicant must identify the field or subject matter of the data (social data, financial data, etc.).  See TMEP §1402.01.

 

Applicant may adopt the following identification, if accurate.  See TMEP §1402.01. The bold language offers suggested amendments to the language in order to overcome the aforementioned issues and indefinitenesss.

 

Class 42:         Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, modifying, sharing or otherwise providing electronic media or information over communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; Providing a website featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple websites; Providing information in the field of website design from searchable indexes and databases of information, namely text, electronic documents, databases, graphics, photographic images, and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Computer services in the nature of providing customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; Computer services, namely, providing search engines for obtaining data on global computer and communication networks; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networks; Providing search engines for obtaining {specify type of data, e.g., social, financial} data via communications networks; Providing online websites that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data

 

 

            CLASS 45

 

The wording “Social introduction, networking and dating services” in the identification of services is indefinite and must be clarified because Applicant must specify whether these services are in-person or on-line.  See TMEP §1402.01.

 

Applicant may adopt the following identification in Class 45, if accurate.  See TMEP §1402.01. The bold language offers suggested amendments to the language in order to overcome the aforementioned issues and indefinitenesss.

 

 

Class 45:         Internet-based social introduction, networking and dating services; Providing access to computer databases in the fields of social networking, social introduction and dating

 

 

 

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 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. 

 

CLAIM OF OWNERSHIP OF REGISTRATIONS

 

 

If applicant owns U.S. Registration Nos. 3041791, 3122052, 3881770, 3801147 and others, 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. 3041791, 3122052, 3881770, 3801147 and others.

 

 

 

DESCRIPTION OF THE MARK & COLOR CLAIM

 

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. 

 

In particular, there are two different shades of blue in the drawing, but only one “blue” is remarked upon in the color claim. Further, color is not mentioned at all in the mark description – Applicant must note the location of all colors.

 

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

The mark consists of the word FACEBOOK in white followed by a series of three designs in dark blue. The design on the left consists of a silhouette of two stylized figures, one figure overlapping the other. The design in the middle consists of a silhouette of two stylized boxes with rounded corners, one box overlapping the other, with triangle shapes extending from the bottom of each box. The design on the right consists of a silhouette of a stylized globe image. The background and the continents on the globe are all depicted in blue.

 

Color claim:  “The colors white, blue and dark blue are claimed as a feature of the mark.”

 

 

See TMEP §807.07(b).

 

 

 

NEW DRAWING REQUIRED – UNACCEPTABLE PIXEL COUNT

 

The drawing is not acceptable because it will not create a high quality image when reproduced.  See TMEP §807.04(a).  Specifically, the USPTO database has specified that the pixelcount is too low for the image to reproduce satisfactorily for publication purposes.

 

A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52.  Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).

 

To submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing.  TMEP §807.05(a); see 37 C.F.R. §2.53(a).  An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with a length and width no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).

 

For drawings submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top.  37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).  The mark in the drawing must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.  37 C.F.R. §2.54(b); TMEP §807.06(a).  Further, the drawing must be made with ink or by a process that will provide a high definition when scanned.  37 C.F.R. §2.54(e); TMEP §807.06(a).  A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used.  37 C.F.R. §2.54(e); TMEP §807.06(a). 

 

The USPTO will not accept amendments or changes to the applied-for mark shown in a new drawing if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.

 

 

SPECIMEN REFUSAL – CLASS 45

 

The specimen does not show the applied-for mark used in connection with any of the goods and/or services specified in Class 45, and therefore is not acceptable.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or 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). 

 

In this case, the specimen displays the Facebook profile page without any reference made to the services of “Social introduction, networking and dating services; Providing access to computer databases in the fields of social networking, social introduction and dating.” No reference is made to such services, and there is not an obvious connection between the specimen and such services.   Therefore, it is not acceptable as a specimen of use for such services.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in actual use in commerce for International Class 45.

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens 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.  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. 

 

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 goods and/or 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 trademark and/or service mark for the identified goods and/or services.  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). 

 

 

 

 

 

 

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

/Caitlin Watts-FitzGerald/

Trademark Examining Attorney

Law Office 111

571-272-9015

caitlin.watts-fitzgerald@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 12/11/2013 FOR U.S. APPLICATION SERIAL NO. 86120787

 

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 12/11/2013 (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.