To: | Giovanello, Guy Patrick (edwin@lauson.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86581139 - GIG - 15-29879 |
Sent: | 7/13/2015 8:07:55 PM |
Sent As: | ECOM119@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86581139
MARK: GIG
|
|
CORRESPONDENT ADDRESS: 880 Apollo St Ste 301 |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Giovanello, Guy Patrick
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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: 7/13/2015
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
Requirement for Further Information on Goods as Identified:
The nature of the goods on which applicant intends to use its mark is not clear from the present record and additional information is required. An applicant can be required to provide more information if it is necessary for proper examination of the application. 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).
Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods. If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods. In addition, applicant must describe in detail the nature, purpose, and channels of trade of the goods.
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814.
Specifically, while the applicant has applied for computer application software in class 9, the subject matter or function of such software is identified as various services, classified in carious international classes other than class 9. Further information is required to determine if the applicant intends to use the mark on class 9 software goods, or if the applicant is offering the service of providing a website offering services or information in a variety of international classes.
Indefinite Language in Proposed identification of Goods Clause:
The identification of services is indefinite and must be clarified because it contains the open-ended wording “including.” See TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.”
Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
Furthermore, the wording “offering music services…transportation of music equipment… is used to identify services in various international classes: entertainment services in class 41; audio recording and production services are in class 41; audio equipment repair and placement are in class 37; social media services for business purposes in the field of music would be in international class 35; providing online forums for business transactions in the music field would be correctly classified in international class 35.
Further information is required before an acceptable identification for goods or services may be suggested.
Color Drawing of Mark in Record, but no Colors Claimed:
Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a substitute black-and-white drawing of the mark to replace the color drawing of record. See TMEP §807.07(a)(i). However, any other amendments to the mark included in the substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit an accurate and concise description of the literal and design elements in the mark, omitting any reference to color. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the word GIG in stylized scrip, with an audio jack forming the letter “I” a curved line connecting the “I” and the tail of the final “g” and an arced line above the first and final letter”g”. This design is surrounded by smaller reproductions of the same design, within circles, forming a square around the centrall located word “GIG”.
(2) If color is a feature of the mark, applicant must submit both (a) a statement listing all the colors that are claimed as a feature of the mark and (b) a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). The following color claim and mark description are suggested, if accurate:
Color claim: “The colors white, red and pink
are claimed as a feature of the mark.”
Mark description: “The mark consists of the following: a stylized reproduction of the word GIG in white, with an audio jack forming the letter “I”, a curved line connecting the “I” and the tail of the final “G”, and an arced line above the first and final letters “g”. The word in placed on a red rectangular background, with smaller versions of the stylized “GIG” word appearing in a square on the inside perimeter of the red square.
See TMEP §807.07(b).
Search Results:
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).
Depending on further information made of record, further searches may be made, depending on the nature of the identified goods/services and classes for such items.
Responding to This Letter:
In addition, applicant filed a TEAS Plus application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to avoid incurring an additional fee. See 37 C.F.R. §2.22(b)(1), (c).
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6(15), 2.66(b)(1).
/Henry S. Zak/
Henry S. Zak
Examining Attorney
Law Office 119
(571)272-9354
henry.zak@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.