UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 7/7/2017

 

This Office action is in response to applicant’s communication filed on May 24, 2017.

 

In a previous Office action(s) dated December 1, 2016, the trademark examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.

 

Based on applicant’s response, the refusal under Trademark Act Section 2(d) for a likelihood of confusion has been withdrawn.

 

Upon review of the applicant’s response, the trademark examining attorney maintains and now makes the NEW refusal(s) and/or requirement(s) in the summary of issues below.

 

SUMMARY OF ISSUES that applicant must address:

• Partial Requirement for Acceptable Identification of Services

 

Partial Requirement for Acceptable Identification of Services

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Some of the wording in the recitation of services must be clarified because it is indefinite and/or overly broad. See TMEP §1402.01.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Where applicant’s services are properly classified in other classes, applicant is required to either (1) specify the services acceptably, add the appropriate international class(es) to the application, and classify the services therein, or (2) delete the services from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.

 

The wording “Transmission and delivery of audio files, data files, text files, videos, music, interactive games, films, video programming, audio programming, and software via the Internet, private networks, cellular networks, and satellite communication networks in the nature of an onboard, inflight, or in transit entertainment system on land vehicles, marine vessels, offshore oil platforms, and aircraft featuring movies, television programs, audio programs, video programs, radio programs, news, in-cabin services, and electronic games” in the identification of services is indefinite, overly broad and must be clarified because it does not make clear the nature of the services and may include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Here, “in the nature of an onboard, inflight, or in transit entertainment system” appears to describe goods, not services.  Applicant may substitute the following wording, if accurate:

 

Class 38:  Transmission and delivery of audio files, data files, text files, videos, music, interactive games, films, video programming, audio programming, and software via the Internet, private networks, cellular networks, and satellite communication networks for onboard, inflight, or in transit entertainment systems on land vehicles, marine vessels, offshore oil platforms, and aircraft featuring movies, television programs, audio programs, video programs, radio programs, news, in-cabin services, and electronic games.

 

General Suggestion for Identification/Classification of Services

 

Class 38:  Transmission and delivery of audio files, data files, text files, videos, music, interactive games, films, video programming, audio programming, and software via the Internet, private networks, cellular networks, and satellite communication networks for onboard, inflight, or in transit entertainment systems on land vehicles, marine vessels, offshore oil platforms, and aircraft featuring movies, television programs, audio programs, video programs, radio programs, news, in-cabin services, and electronic games; Transmission and delivery of audio files, data files, text files, and software via the Internet, private networks, cellular networks, and satellite communication networks for airlines to provide real-time visibility into fleet performance, operational data during flight, media consumption, system health monitoring, and aircraft maintenance, to enable and support system maintenance operations and data transfer of passenger-facing content to an aircraft, and to provide access to real-time passenger data.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

PARTIAL ABANDONMENT – ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 38 will be deleted from the application:  “Transmission and delivery of audio files, data files, text files, videos, music, interactive games, films, video programming, audio programming, and software via the Internet, private networks, cellular networks, and satellite communication networks in the nature of an onboard, inflight, or in transit entertainment system on land vehicles, marine vessels, offshore oil platforms, and aircraft featuring movies, television programs, audio programs, video programs, radio programs, news, in-cabin services, and electronic games”.  The application will then proceed with the following services in International Class 38 only:  “transmission and delivery of audio files, data files, text files, and software via the Internet, private networks, cellular networks, and satellite communication networks for airlines to provide real-time visibility into fleet performance, operational data during flight, media consumption, system health monitoring, and aircraft maintenance, to enable and support system maintenance operations and data transfer of passenger-facing content to an aircraft, and to provide access to real-time passenger data”.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

RESPONSE GUIDELINES

 

All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

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

 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

(571) 272-6110

jeanie.lee@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/7/2017 FOR U.S. APPLICATION SERIAL NO. 87126157

 

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 7/7/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.