To: | WhatsApp Inc. (trademarks@fenwick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86804170 - WHATSAPP - 30444-00077 |
Sent: | 9/16/2016 11:33:01 AM |
Sent As: | ECOM118@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86804170
MARK: WHATSAPP
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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: WhatsApp 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: 9/16/2016
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on 8/23/16.
The following requirement is now made FINAL:
Applicant must submit an acceptable identification of services. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c); See 37 C.F.R. §2.63(b).
Applicant has argued that this wording should be acceptable because the “language is consistent with the language that was accepted for Applicant's Registration No. 3939463 (WHATSAPP).” The examining attorney attached a note from the U.S. Acceptable Identification of Goods and Services Manual to the first Office action which states that the wording “providing” and “databases” must be deleted from this language in order for it to be deemed acceptable.
042 Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites, in the fields of personal productivity, wireless communication, mobile information access, and remote data
management f or wireless delivery of content to handheld computers, laptops and mobile electronic devices
07-22-2010 Deleted the words “providing” and “and databases” from the 01-25-2007 entry to make clear that the services are computer services in Class 42.
Applicant may substitute the following wording, if accurate: “Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers laptops and mobile electronic devices.”
Response
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(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).
Failure to Respond Will Result in Partial Abandonment
Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; SIM cards; Computer hardware; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Downloadable e-commerce computer software to allow users to perform electronic business transactions via a global computer and communication networks; Computer software for personal information management, and data synchronization software; Computer software development tools; Computer software for use as an application programming interface (API) in Class 9;
Telecommunication services, namely, data transmission and reception services via telecommunication networks; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Audio, text and video broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Providing online forums for communication on topics of general interest; Providing online communications links that transfer mobile device and Internet users to other local and global online locations in Class 38;
Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for interactive discussions via communication networks; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identity data with and among multiple online facilities; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via global computer network; Computer services, in particular, application service provider featuring application programming interface (API) software to allow users to perform electronic business transactions via a global computer network; Software as a service (SAAS) services featuring software for sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network in Class 42;
Online social networking services; Identification verification services, namely, providing authentication of personal identification information; Social introduction and networking services; User verification services, namely, providing authentication of company and personal identification information; Identification verification services, namely, providing authentication of company identification information in Class 45.
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
/Ronald McMorrow/
Examining Attorney
Law Office 118
571-272-9306
ronald.mcmorrow@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.