Offc Action Outgoing

XR

Baza, Inc.

U.S. TRADEMARK APPLICATION NO. 86816996 - XR - 130563-39325

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

 

 

        

*86816996*

CORRESPONDENT ADDRESS:

       ANDREW D. PRICE

       VENABLE LLP

       P.O. BOX 34385

       WASHINGTON, DC 20043

       

 

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: Baza, Inc.

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

       130563-39325

CORRESPONDENT E-MAIL ADDRESS: 

       trademarkdocket@venable.com

 

 

 

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: 3/11/2016

 

 

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).

 

 

SUMMARY OF ISSUES:

 

  • Descriptive Refusal
  • Basis
  • Identification of Goods and Services
  • Declaration

 

DESCRIPTIVE REFUSAL

 

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.

 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

 

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. 

 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“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).

 

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

 

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.

 

 

If applicant responds to the above refusal, applicant must also respond to the requirement(s) set forth below.

 

 

BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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.

 

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

 

DECLARATION

 

The application was not signed and verified, which are application requirements.  See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  Therefore, applicant must verify the statements specified further below in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).

 

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)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

If applicant has questions regarding this Office action, please telephone the assigned trademark examining attorney. 

 

 

 

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.

 

 

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U.S. TRADEMARK APPLICATION NO. 86816996 - XR - 130563-39325

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:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/11/2016 FOR U.S. APPLICATION SERIAL NO. 86816996

 

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 3/11/2016 (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.

 

 


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