UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

FINAL 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: 5/10/2018

 

THIS IS A FINAL ACTION.

 

Introduction

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This letter responds to applicant’s communication filed on February 21, 2018, (the “Response”) in which Applicant:

 

1. presented arguments against the citation of prior pending applications;
2. presented arguments against the descriptiveness refusal;
3. proposed an amended identification of goods and services for Classes 009, 035 and 041; and
4. proposed an amended identification of goods and services for Classes 038 and 042.

 

Nos. (1)-(3) are acceptable. 

No. (4) is not acceptable.

 

The requirement for an acceptable identification of goods and services is now made FINAL for the reasons set forth below.  37 C.F.R. §2.63(b); TMEP §1402.01.

 

Summary of Issues

 

1.     Final Requirement: Identification of Goods and Services

2.     Proper Response to a Final Action, including partial abandonment advisory

 

Final Requirement: Identification of Goods and Services

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

International Class 038

 

The wording “broadcast […] of streamed music, audio, video, and multimedia content” in the identification of services for Class 038 is indefinite and needs clarification to specify the type of broadcasting, e.g. broadcasting by internet and cellular telephone transmission.  TMEP §1402.01.

 

The wording “providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs” in the identification of services for Class 038 is indefinite.  In its Response applicant proposed the following language in its argument, however, this language did not appear in applicant’s amended identification of goods and services:  “providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs on the Internet by means of telecommunications networks”.  TMEP §1402.01. The examining attorney has incorporated this language into the suggestion below.  This language is now acceptable, because it specifies the means by which the services are provided, i.e. on the Internet by means of telecommunications networks. 

                               

The wording “communication by computer” in the identification of services for Class 038 is indefinite and needs clarification to specify that the communication by computer is done via user interface, e.g. communication by computer terminals.  TMEP §1402.01.

 

In its Response, applicant argues that the additional word, “terminal” is unnecessary insofar as “computer” is sufficiently precise.  Applicant’s assertion is incorrect, because applicant must specify the means by which a person communicates using the computer, e.g. via a computer terminal. 

 

International Class 042

 

The wording “computer services, namely remote hosting of operating systems and computer applications for others; providing hosted operating systems and computer applications through the internet” in the identification of services for Class 042 is indefinite and needs clarification to specify the type of hosting services.  If the services are hosting the software of others, then so state, i.e. computer services, namely remote hosting of operating systems and computer applications of others.  If the services are hosting its own software for use by others, then applicant must specify the function of the software, e.g. computer services, namely remote hosting of operating systems and computer applications [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use] for use by others.  TMEP §1402.01.

 

 

The wording “constructing in the nature of […] building a computer platform on the internet for electronic commerce for others” in the identification of services for Class 042 is indefinite and needs clarification to specify what applicant means by “building” its Class 042 services by common commercial name, e.g. designing, developing.  TMEP §1402.01. 

 

If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.

 

Class 009:       [accepted as amended]

 

Class 035:       [accepted as amended]

 

Class 038:       Electronic transmission of voice, data, images, music, audio, video, multimedia, television, and radio by internet and cellular telephone transmission broadcasting; [please specify the type of broadcasting, e.g. broadcasting by internet and cellular telephone transmission] and electronic transmission of streamed music, audio, video, and multimedia content; subscription and pay-per-view television broadcasting and electronic data transmission services; cellular electronic transmission of mail, electronic messaging, electronic data transmission, audioconferencing, and videoconferencing services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television; providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs on the Internet by means of telecommunications networks; communication by computer terminals; information, advisory and consultancy services relating to all the aforesaid

 

Class 041:       [accepted as amended]

 

Class 042:       Providing on-line non-downloadable computer programs for monitoring automobile performance, for mapping and navigation, for transmitting and receiving electronic mail and wireless communications, and for maintaining personal directories, contact lists, address and telephone number lists; Providing on-line non-downloadable computer programs for accessing global communication networks; Providing on-line non-downloadable computer programs for accessing global communication networks and displaying content therefrom; providing on-line non-downloadable web-based business application programs for e-mail, internet access, calendaring, creating and editing documents, note-taking, project management, electronic publishing, presentations, storytelling, business intelligence, database management, and productivity; design and development of computer hardware and software; computer services, namely remote hosting of operating systems and computer applications of others; computer services, namely remote hosting of operating systems and computer applications for [please specify function of the software, e.g. use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use] for use by others; providing hosted operating systems and computer applications of others through the internet; providing hosted operating systems and computer applications for [please specify function of the software, e.g. use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use] for use by others through the internet; rental of computing and data storage facilities of variable capacity; providing, developing and designing on-line non-downloadable software accessible over a global computer network for managing computer applications; constructing in the nature of designing and developing a computer platform on the internet for electronic commerce for others; managing and monitoring the websites of others that feature online discussion forums; designing and developing electronically stored web pages for online services on the internet; data warehousing; elaboration and maintenance of web sites for third parties; managing web sites for others; rental of web servers; web site maintenance, creation and hosting services for others; application service provider, namely, providing, hosting, managing, developing and maintaining applications, software, websites and databases in the fields of ecommerce, online payments, order queuing, website design, data storage, shared computing capacity scaling, messaging services and calculation of website ranking based on user traffic

                                                                                                                  

See TMEP §1402.01.

 

Advisories

 

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.  The examining attorney has attached excerpts from the ID Manual to aid the applicant. Please see attached.

 

Proper Response to a Final Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirements apply will be deleted from the application by Examiner’s Amendment: 

 

International Class 038

 

“broadcast […] of streamed music, audio, video, and multimedia content”;

 

 “providing access to websites, databases, electronic bulletin boards, on-line forums, directories, music, and video and audio programs”;

           

 “communication by computer”;

 

International Class 042

 

 “computer services, namely remote hosting of operating systems and computer applications for others; providing hosted operating systems and computer applications through the internet”; and

 

 “constructing in the nature of […] building a computer platform on the internet for electronic commerce for others”.

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and services: 

 

Class 009

 

Computers, tablet computers, laptops; software developer kits; portable electronic devices for receiving and reading text, images and sound through wireless internet access, namely, electronic book readers, MP3 players, mobile computers, portable computers, mobile phones; computer software for use in connection with the transmission of voice and data; computer software used for controlling stand-alone voice controlled information devices, namely, cloud-connected and voice-controlled smart devices to monitor and control the functioning of household and electronic devices; electronic and wireless transmitters and receivers for transmitting and receiving voice and data; voice processing software, namely, software for the control of voice controlled information and communication devices; voice-activated software, namely, software for controlling stand-alone voice controlled information devices comprised of cloud-connected and voice-controlled information devices; voice-activated software, namely, software for controlling stand-alone voice controlled information devices comprised of cloud-connected and voice controlled smart devices with virtual personal assistant capabilities; Mixed-reality computing platforms for integrating real world and virtual reality environments; computer software for creating, uploading, and sharing 3D images and models; Malware protection software; Software for securing access to laptops, phones, and computers; facial recognition software; fingerprint recognition software; iris recognition software; software that enables a user to hand-write notes and text with a digital pen onto touch-enabled devices; software that interprets hand-written content on touch-enabled devices; computer software for creating, editing, uploading and sharing digital drawing; software that allows for annotations to image via digital ink; software for connecting a smartphone or tablet computer to a monitor, mouse, and keyboard and project the desktop to the monitor;

 

Class 035

 

Arranging and conducting business seminars and business conferences in the field of technology;

 

Class 038

 

Electronic transmission of voice, data, images, music, audio, video, multimedia, television, and radio by internet and cellular telephone transmission broadcasting; electronic transmission of streamed music, audio, video, and multimedia content; subscription and pay-per-view television broadcasting and electronic data transmission services; cellular electronic transmission of mail, electronic messaging, electronic data transmission, audioconferencing, and videoconferencing services; providing access to telecommunications networks, computer networks, the Internet, satellite communications, wireless communications networks, and cable television; information, advisory and consultancy services relating to all the aforesaid;

 

Class 041

 

Education services, namely, arranging, organizing, conducting, and presenting educational seminars, workshops, classes, non-downloadable webinars, educational conferences, online instruction, and distance learning programs, all in the field of technology, computing, productivity, mixed reality, education, gaming, and creative arts; production, distribution, and presentation of radio programs, television programs, motion pictures, sound recordings; entertainment services, namely, providing ongoing television, radio, audio, non-downloadable video, podcast, and webcast programs, all in the field of entertainment, sports, musical, current events, art, culture, technology, computing, productivity, mixed reality, education, gaming, and creative arts; entertainment services, namely, providing entertainment, sports, music, news, and current events continuing programs by means of telecommunications networks, computer networks, the Internet, satellite, radio, wireless communications networks, television, and cable television; providing a website featuring non-downloadable videos in the field of entertainment, sports, music, news, and current events; entertainment services, namely, providing a continuing program featuring educational, entertainment, sports, music, news, current events, and arts and culture accessible by means of the internet and web-based computer applications; entertainment services, namely, providing a continuing program featuring information in the field of education, entertainment, music, sports, news, and arts and culture accessible by means of the internet and web-based computer applications; entertainment services, namely, providing temporary use of non-downloadable computer games, electronic games, interactive games, and video games; providing a website and web-based applications featuring non-downloadable books, periodicals, newspapers, newsletters, manuals, blogs, journals, and magazines and articles in the field of entertainment, sports, musical, current events, art, culture, technology, computing, productivity, mixed reality, education, gaming, and creative arts; and

 

Class 042

 

Providing on-line non-downloadable computer programs for monitoring automobile performance, for mapping and navigation, for transmitting and receiving electronic mail and wireless communications, and for maintaining personal directories, contact lists, address and telephone number lists; Providing on-line non-downloadable computer programs for accessing global communication networks; Providing on-line non-downloadable computer programs for accessing global communication networks and displaying content therefrom; providing on-line non-downloadable web-based business application programs for e-mail, internet access, calendaring, creating and editing documents, note-taking, project management, electronic publishing, presentations, storytelling, business intelligence, database management, and productivity; design and development of computer hardware and software; rental of computing and data storage facilities of variable capacity; providing, developing and designing on-line non-downloadable software accessible over a global computer network for managing computer applications; constructing in the nature of designing a computer platform on the internet for electronic commerce for others; managing and monitoring the websites of others that feature online discussion forums; designing and developing electronically stored web pages for online services on the internet; data warehousing; elaboration and maintenance of web sites for third parties; managing web sites for others; rental of web servers; web site maintenance, creation and hosting services for others; application service provider, namely, providing, hosting, managing, developing and maintaining applications, software, websites and databases in the fields of ecommerce, online payments, order queuing, website design, data storage, shared computing capacity scaling, messaging services and calculation of website ranking based on user traffic.

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 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).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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.  

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 5/10/2018 FOR U.S. APPLICATION SERIAL NO. 87473722

 

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 5/10/2018 (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.