To: | Baza, Inc. (trademarkdocket@venable.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86816996 - XR - 130563-39325 |
Sent: | 3/11/2016 9:26:04 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86816996
MARK: XR
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Baza, Inc.
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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: 3/11/2016
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 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).
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Applicant seeks to register the mark “XR” for various goods and services including software that provides the user with a real time, live video feed from a location via mobile phone, wearable mobile device or other mobile video technology. “XR” is an abbreviation for “extended reality.” [See attached internet evidence.] “Extended reality (XR) is a term referring to all real-and-virtual combined environments and human-machine interactions generated by computer technology and wearables. It includes representative forms such as augmented reality (AR), augmented virtuality (AV) and virtual reality (VR), and the areas interpolated among them.” [See attached internet evidence.] Applicant’s software creates, utilizes or incorporates extended reality or real-and-virtual reality environments.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
For these reasons, the mark, “XR” is descriptive and registration is refused on the Principal Register.
Although applicant's mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
BASIS
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is unacceptable because it contains wording that is indefinite. Applicant must amend the identification by listing each item specifically or by its generic or common commercial name. See TMEP §§1402.01, 1402.03.
Applicant should note the suggestions and/or explanations in bold in the proposed identification below.
The applicant is strongly urged to consult the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html for assistance with identifying and classifying goods and services in this trademark application.
The following substitute wording is suggested, if appropriate:
International Class 009
Downloadable mobile application software that enables a user to view contractors in a different location, filter and search them by qualifications and precise geographic location, select the contractor who best meets the needs of the user, instruct that individual to go to a specific location and provide the user with a real time, live video feed from that location via mobile phone, wearable mobile device or other mobile video technology, for the purpose of communicating with the contractor and that allows the user to rate the contractor; downloadable mobile application software that enables contractors to show their availability to customers in different locations, that allows contractors to be filtered and searched by the qualifications and precise geographic location and that provides real time, live video feed from a specific location via mobile phone, wearable mobile device or other mobile video technology, for the purpose of communicating with the customer and that allows the customer to rate the contractor; near field communication (NFC) technology-enabled readers; radio frequency identification (RFID) tags; wireless hands-free technology-enabled devices, namely, wearable digital electronic smart bands in the nature of computers that facilitate electronic payments; wearable digital electronic smart bands in the nature of computers comprised of software in the field of haptic technology and display screens or lights, both of which cause the devices to provide haptic or visual notifications to the wearer or others, in connection with mobile application software or online non-downloadable software installed on a second device that facilitates a person in one location to set up a real time, live video feed from that location and share it with the person in the other location, and otherwise communicate with that person; computer software for use in wearable digital electronic devices to provide haptic or visual notifications to the wearer or others, for use in the field of haptic technology
International Class 038
Telecommunications services, namely, routing video feeds, SMS messages, telephone calls and push notifications to persons in different locations so that a person in one location can set up a real time, live video feed of that location and share it with the person in the other location, and the parties can otherwise communicate
International Class 042
Providing temporary use of online non-downloadable software that enables a user to view contractors in a different location, filter and search them by qualifications and precise geographic location, select the contractor who best meets the needs of the user, instruct that individual to go to a specific location and provide the user with a real time, live video feed from that location via mobile phone, wearable mobile device or other mobile video technology, for the purpose of communicating with the contractor, and that allows the user to rate the contractor; providing temporary use of online non-downloadable software that enables contractors to show their availability to customers in different locations, that allows contractors to be filtered and searched by the qualifications and precise geographic location and that provides real time, live video feed from a specific location via mobile phone, wearable mobile device or other mobile video technology, for the purpose of communicating with the customer and that allows the customer to rate the contractor
International Class 045
Providing information regarding personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, using mobile technology; providing a website and searchable database featuring information about personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, using mobile technology
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.
DECLARATION
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response form, answer “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing.
To respond to this requirement on paper, via regular mail, applicant may provide the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature. See 37 C.F.R. §§2.20, 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(a), (d); TMEP §§611.01(b), 804.01(b). The signatory’s particular title or position should also be specified. See TMEP §804.04.
STATEMENTS: The signatory believes that: the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; and to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods and/or services of such other person, to cause confusion or mistake, or to deceive.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
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(Print or Type Name and Position)
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(Date)
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.
/E.Bradley/
Evelyn Bradley
Trademark Examiner
Law Office 105
(571) 272-9292
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.