To: | EchoStar Technologies L.L.C. (ipdept@echostar.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86609478 - MOVETV - T2015-04-06 |
Sent: | 8/3/2015 10:43:05 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86609478
MARK: MOVETV
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CORRESPONDENT ADDRESS: Echostar Operating Corporation 100 Inverness Ter E |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: EchoStar Technologies L.L.C.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 8/3/2015
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 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).
Summary of Issues That Applicant Must Address:
Identification of Services
Please note that this is a multiple-class application because the following wording is improperly classified in International Class 42, and belongs in International Class 37: “customization of computer hardware”.
See the “Multiple-Class Application Requirements” section below for information on how to proceed with a multiple-class application.
Applicant may adopt the following identification of services, if accurate (changes in bold):
International Class 37: Customization of computer hardware for others
International Class 42: Custom design, engineering, and integration of computer systems
and networks, namely, integration of cable television systems, multimedia content distribution systems, and video and audio communications systems; Design and planning of cable television systems, content distribution systems, and communications systems; technical support, namely, monitoring of cable television systems, content distribution systems, and communications systems; technical consultation and computer software consultation in the field of broadband communications systems; consulting services in the field of design, selection, implementation, and use of computer hardware and software for others; customization of computer software for others; software as a service (SaaS) services featuring software for electronic transmission and delivery of audio, video and multimedia content; software as a service (SaaS) services featuring software for use by the broadband communications and cable industries for use in network management and for customer account management; software as a service (SaaS) services featuring software for electronic commerce, video-on-demand, interactive online games, browsing the Internet, and sending and receiving email and instant messages; software as a service (SaaS) services featuring software for use in connection with monitoring software performance, collecting and analyzing customer data for sales and marketing purposes, managing customer accounts and customer access, and tracking and directing advertising to customers; software as a service (SaaS) services featuring software for the operation of cable television systems, content distribution systems, and communication systems; software as a service (SaaS) services featuring software for facilitating video communications between parties; software as a service (SaaS) services featuring software for uploading, posting, displaying, editing, organizing, transmitting, sharing and tagging video, images, audio and content; software as a service (SaaS) services featuring software for accessing the Internet and computer networks; software as a service (SaaS) services featuring software for {specify what computer operations are being performed, e.g. computer operating system configuration management, scanning, detecting and repairing errors on a computer, computer hard drive, computer operating system, etc.}; software as a service (SaaS) services featuring software for wireless or remote connectivity to computer networks, applications, devices, systems, communication equipment, video equipment, telecommunications equipment, peripherals, and databases; software as a service (SaaS) services featuring software for the transmission of voice, data, audio, and video; software as a service (SaaS) services featuring software for providing video, audio, data, video game, and telephone communications and transmissions; software as a service (SaaS) services featuring software for sending, storing, managing, integrating and accessing voice, video, images, data and text and voice messages via telephones, computers, set top boxes, electronic mail, pagers, personal digital assistants, computer peripherals, and internal and global computer networks; software as a service (SaaS) services featuring software for connecting individuals, information, applications, communication tools, and content across computer networks, systems, and devices via {specify how connection is taking place, e.g. social networking, etc.}; software as a service (SaaS) services featuring software for use in computer system and device backup, recovery, and restoration; software as a service (SaaS) services featuring software for computer anti-virus protection; software as a service (SaaS) services featuring software for computer security; software as a service (SaaS) services featuring software for use in {specify what kind of protection, e.g. protecting computer databases, operating programs, and application programs against unauthorized infiltration and corruption and for data protection, etc.}; software as a service (SaaS) services featuring software for privacy control.
See TMEP §1402.01.
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.
Multiple-Class Application Requirements
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). For information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by TEAS and in a paper submission, please go to http://www-cms.gov.uspto.report/trademark/laws-regulations/how-satisfy-requirements-multiple-class-trademark-electronic-application.
Response Options
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.
/Jessica Hilliard/
Trademark Examining Attorney
Law Office 120
571-272-4031
Jessica.Hilliard@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.