To: | NTT DOCOMO, INC. (docket@hollandhart.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86827521 - JSPEAK - 49854.0088 |
Sent: | 4/30/2016 6:37:53 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86827521
MARK: JSPEAK
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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: NTT DOCOMO, 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: 4/30/2016
THIS IS A FINAL ACTION.
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.
The requirement for an acceptable identification of services is now made FINAL for the reasons set forth below. Trademark Act Section 1; 37 C.F.R. §§2.32(a)(6), 2.63(b).
The trademark examining attorney notes that the following requirement has been satisfied: a definite amended identification was provided for the services in class 42. See TMEP §§713.02, 714.04.
IDENTIFICATION OF SERVICES
By itself, “Facilities and locations” does not identify goods or services. This wording should be deleted from the recitation of services for class 35. It appears to be a typographical error that repeats the last words of the prior statement of services.
In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name. See TMEP §1402.03(a).
“Bookkeeping” and “business auditing” do not need to be followed by “services.” “Administrative” is not recognized as a modifier of “data processing services,” which is acceptable by itself.
Applicant may adopt the following identification, if accurate:
“Advertising, marketing and promotion services; advertising, including online advertising on a computer network; rental of advertising space on web sites; banner advertising; providing incentive award programs for customers through issuance and processing of loyalty points for purchase of a company's goods and services; promoting the goods and services of others by means of awarding purchase points for credit card use, distributing coupons and the issuance of loyalty rewards cards; promoting recreation and tourism in Japan; providing consumer product information via the Internet; providing consumer information services and making referrals in the field of entertainment services for products, services, events, activities, facilities and locations; providing hotel rate comparison information; accountancy services; bookkeeping; business auditing; telephone answering services; data processing services; computer file management; compilation and systematization of information into computer databases,” in class 35.
USPTO DISCRETION
(1) A response that fully satisfies all outstanding requirements.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Ira Goodsaid/
Examining Attorney
Law Office 101
571-272-9166
ira.goodsaid@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.