To: | Misapplied Sciences, Inc. (SyedA.Docketing@SeedIP.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87712233 - PARALLEL REALITY - 670132.206 |
Sent: | 12/31/2018 7:31:59 AM |
Sent As: | ECOM123@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87712233
MARK: PARALLEL REALITY
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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: Misapplied Sciences, 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. 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: 12/31/2018
THIS IS A FINAL ACTION.
INTRODUCTION
This Office action is in response to applicant’s communication filed on September 18, 2018.
In a previous Office action dated March 20, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for merely describing features of the identified goods and services. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and services, provide additional information about the goods and services. Applicant was also advised that the applied-for mark is potentially generic.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: identifications of services in International Classes 37 and 38 acceptably amended, additional information provided. See TMEP §§713.02, 714.04.
In addition, the following refusal has been withdrawn: Trademark Act Section 2(e)(1) for mere descriptiveness. See id.
The trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
IDENTIFICATION OF GOODS AND SERVICES AMENDMENT REQUIRED (PARTIAL)
REQUIREMENT PERTAINS ONLY TO THOSE GOODS AND SERVICES SPECIFIED HEREIN
Class 9 Goods
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold and underline):
Class 9: scientific, nautical, surveying, photographic, cinematographic, optical, measuring, signaling, checking, and teaching apparatus and instruments, namely multi-view electronic display boards; apparatus for recording, transmission or reproduction of sound or images; blank recording discs; blank magnetic data carriers; cash registers; calculating machines; fire extinguishing apparatus; data processing apparatus; electronic displays, namely, digital signage; electric and electronic display panels for displaying multiple views; electric warning lights; illuminated exit signs; illuminated evacuation signs; electronic script prompters and cues for use in conjunction with multi-view displays; customized content distribution and delivery systems, namely, multi-view electronic display boards; customized content distribution and delivery systems, namely, computer software and computer hardware for _______ {identify functionality of software e.g., operating, programming, uploading data to, etc.} electronic and static display; electric sensors; computer software and hardware for analyzing data from electric sensors and their attendant servers and memory media; electronic systems, namely, computer software and hardware for the input, output, storage, retrieval, communication and display of data and information; electronic systems comprising software and hardware for wayfinding; carrying cases specifically adapted for carrying electronic multi-view display boards and ancillary related components including lights; supporting devices for multi-view electronic display systems, namely, electronic control wands and wearables in the nature of smart watches, smart eyeglasses, activity trackers, video display monitors, computer peripherals in the nature of wireless mice that are adapted to engage with multi-view displays; electric warning light systems; emergency warning lighting; emergency evacuation lighting; navigational safety-warning lights, namely, lights that are specifically adapted to engage with electronic multi-view displays
Class 11 Goods
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold and underline):
Class 11: Airport runway and transportation directional lights; carrying cases specifically adapted for electric lights; lighting installations; lighting installations for use in the field of architectural lighting; decorative lighting in the nature of light bulbs, electric lanterns, lamps, LED lighting fixtures, floodlights, spotlights, chandeliers, wall lights, lanterns, LED light strips, figurines being electrically-luminated; entertainment lighting, namely, stage spotlights, live music and musical stage spotlights, live show stage spotlights, and film stage spotlights; light stands for theatrical stage lighting, live music and musical stage lighting, live show stage lighting, film stage lighting; lighting apparatus for sports arenas and theme parks; exit lighting, namely, lights for illuminating stairs, floors, doors, and other portions of building structures; guidance lighting, namely, lights for illuminating stairs, floors, doors, and other portions of building structures; navigational lighting, namely, lamps, light emitting diodes (LEDs), electric luminaires, LED luminaires, luminaire reflectors, luminaire diffusers, luminaire refractors, luminaire diffractors; theatrical lighting, namely, theatrical stage lighting apparatus; thematic lighting, namely stage spotlights, live music and musical stage spotlights, live show stage spotlights, and film stage spotlights; apparatuses for lighting, heating, steam generation, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes, namely, lighting installations, heating installation, liquid fuel heating appliance being _________ {identify nature of heater by common commercial or generic name, e.g., kerosene heaters, oil stoves, kerosene stoves, etc.}, gas fuel heating appliance being _________ {identify nature of heater by common commercial or generic name or by purpose or function of heater, e.g., stoves, patio heaters, cooking ovens, etc.}, steam generating installations, electric _____ {identify product by common commercial or generic name or by product cooked, e.g., slow, egg, rice, etc.} cooker, electromagnetic induction cooker, microwave ovens, refrigerator, freezing device, namely, freezers, dryer for industrial use, namely, dryer for drying paint, dryer for drying coatings, convection dryers being dehumidifiers, air dryer for drying clothes, air dryer for drying hands, air dryer for drying hair, ventilation regulator being _________ {identify product by common commercial or generic name, e.g., valves for air conditioners, air valves for steam heating installations, etc.}, valve for water supply being _________ {identify product by common commercial or generic name or by purpose or function, e.g., control valves for water faucets, metered valves, Shut-off valves for water sprinkler nozzles, etc.}
Class 41 Services
In this case, the application originally identified the goods and/or services as follows: “education and entertainment services, namely, in the field of entertainment, education, sports, culture, and personal enrichment; training services in the field of entertainment, education, sports, culture, and personal enrichment.”
However, the proposed amendment identifies the following goods and/or services: “translations, namely, language translations; technical consultation in the field of translation services.”
This portion of the proposed amendment is beyond the scope of the original identification because translation services are not contemplated by the originally identified educational and entertainment services listed in the application as filed.
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold and strikethrough). Please note that if applicant wishes to adopt the suggested deletions, featured in strikethrough below, applicant MUST MANUALLY DELETE the struck through matter within electronic USPTO response forms. Copying and pasting the below language will NOT result in the deletion of the language from the identification.
Class 41: education services, namely, conducting classes, seminars, conferences, and workshops in a live and virtual environment in the field of
sports, culture, and personal enrichment; entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, multimedia
entertainment content, and live visual and audio performances, namely, in the field of sports, culture, and personal enrichment; training services in the field of sports and personal enrichment;
cross-cultural training; gambling services; translations, namely, language translations; technical consultation in the field of translation services
Class 42 Services
Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07. Applicant’s 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. Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
In this case, the application originally identified the goods and/or services as follows: “Scientific and technological services, namely, research and design in the field of computer systems; industrial analysis and research services; design and development of computer hardware and software; data acquisition and collection for use in the field comprising content distribution systems, advertising, captioning, decoration, directions, education, effects, entertainment, gambling, gaming, guiding, illumination, information, marketing, marques, prompting, safety, security, signaling, scoreboards, traffic control, transportation, translations, and wayfinding; computer services in the field comprising content distribution, advertising, captioning, decoration, directions, education, effects, entertainment, gambling, gaming, guiding, illumination, information, marketing, marques, prompting, safety, security, signaling, scoreboards, traffic control, transportation, translations, and wayfinding.”
However, the proposed amendment identifies the following goods and/or services: “data acquisition and collection, namely, data automation and collection service using proprietary software to evaluate, analyze and collect service data; technical consultation related to illumination, namely, lighting design, and technology specification services pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications; technical consultation in the field of security, namely, computer, internet, data and digital signal processing security; technical consultation in the field of electronic scoreboard design; technical consultation for transportation and traffic planning services; technical consultation in the field of wayfinding systems for others; technical consultation for designs of theme park; technical consultation in the field of city planning and transportation planning; technical consultation in the field of architectural lighting design".
This portion of the proposed amendment is beyond the scope of the original identification because the services identified in the originally application limited data acquisition services to specific fields of operation whereas the amended identification makes no such limitation. Further, whereas the identification contained within the original application lists computer research and design, industrial analysis, computer design, data acquisition and collection, and computer services in various specific fields, applicant has amended the identification to list technological consultation services. The broadly worded "technical consultation" language, while encompassing the more specific elements originally listed, go beyond the meaning and scope of the originally-identified services to incorporate additional services not originally listed.
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold and strikethrough). Please note that if applicant wishes to adopt the suggested deletions, featured in strikethrough below, applicant MUST MANUALLY DELETE the struck through matter within electronic USPTO response forms. Copying and pasting the below language will NOT result in the deletion of the language from the identification.
Class 42: Scientific and technological services, namely, research and design in the field of computer
systems; industrial analysis and research services in the field of fiber optics; design and development of computer hardware and software; data acquisition and collection in the fields of content distribution systems, advertising, captioning, decoration, directions, education, effects, entertainment, gambling, gaming, guiding, illumination, information,
marketing, marques, prompting, safety, security, signaling, scoreboards, traffic control, transportation, translations, and wayfinding,
namely, data automation and collection service using proprietary software to evaluate, analyze and collect service data; technical consultation related to illumination, namely,
lighting design, and technology specification services pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications; technical
consultation in the field of security, namely, computer, internet, data and digital signal processing security; technical consultation in the field of electronic scoreboard design; technical
consultation for transportation and traffic planning services; technical consultation in the field of wayfinding systems for others; technical consultation for designs of theme park; technical
consultation in the field of city planning and transportation planning; technical consultation in the field of architectural lighting design
SCOPE ADVISORY
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.
RESPONSE GUIDELINES
Class 9: blank magnetic carriers; customized content distribution and delivery systems, namely, computer software and computer hardware for electronic and static display
Class 11: decorative lighting in the nature of…figurines; navigational lighting, namely,…LEDs; apparatuses for lighting, heating, steam generation, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes, namely, …liquid fuel heating appliance, gas fuel heating appliance,… electric cooker, induction cooker,… convection dryers,… ventilation regulator, valve for water supply
Class 41: translations, namely, language translations; technical consultation in the field of translation services
Class 42: data acquisition and collection, namely, data automation and collection service using proprietary software to evaluate, analyze and collect service data; technical consultation related to illumination, namely, lighting design, and technology specification services pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications; technical consultation in the field of security, namely, computer, internet, data and digital signal processing security; technical consultation in the field of electronic scoreboard design; technical consultation for transportation and traffic planning services; technical consultation in the field of wayfinding systems for others; technical consultation for designs of theme park; technical consultation in the field of city planning and transportation planning; technical consultation in the field of architectural lighting design
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 9: scientific, nautical, surveying, photographic, cinematographic, optical, measuring, signaling, checking, and teaching apparatus and instruments, namely multi-view electronic display boards; apparatus for recording, transmission or reproduction of sound or images; blank recording discs; cash registers; calculating machines; fire extinguishing apparatus; data processing apparatus; electronic displays, namely, digital signage; electric and electronic display panels for displaying multiple views; electric warning lights; illuminated exit signs; illuminated evacuation signs; electronic script prompters and cues for use in conjunction with multi-view displays; customized content distribution and delivery systems, namely, multi-view electronic display boards; electric sensors; computer software and hardware for analyzing data from electric sensors and their attendant servers and memory media; electronic systems, namely, computer software and hardware for the input, output, storage, retrieval, communication and display of data and information; electronic systems comprising software and hardware for wayfinding; carrying cases specifically adapted for carrying electronic multi-view display boards and ancillary related components including lights; supporting devices for multi-view electronic display systems, namely, electronic control wands and wearables in the nature of smart watches, smart eyeglasses, activity trackers, video display monitors, computer peripherals in the nature of wireless mice that are adapted to engage with multi-view displays; electric warning light systems; emergency warning lighting; emergency evacuation lighting; navigational safety-warning lights, namely, lights that are specifically adapted to engage with electronic multi-view displays
Class 11: Airport runway and transportation directional lights; carrying cases specifically adapted for electric lights; lighting installations; lighting installations for use in the field of architectural lighting; decorative lighting in the nature of light bulbs, electric lanterns, lamps, LED lighting fixtures, floodlights, spotlights, chandeliers, wall lights, lanterns, LED light strips; entertainment lighting, namely, stage spotlights, live music and musical stage spotlights, live show stage spotlights, and film stage spotlights; light stands for theatrical stage lighting, live music and musical stage lighting, live show stage lighting, film stage lighting; lighting apparatus for sports arenas and theme parks; exit lighting, namely, lights for illuminating stairs, floors, doors, and other portions of building structures; guidance lighting, namely, lights for illuminating stairs, floors, doors, and other portions of building structures; navigational lighting, namely, lamps, electric luminaires, LED luminaires, luminaire reflectors, luminaire diffusers, luminaire refractors, luminaire diffractors; theatrical lighting, namely, theatrical stage lighting apparatus; thematic lighting, namely stage spotlights, live music and musical stage spotlights, live show stage spotlights, and film stage spotlights; apparatuses for lighting, heating, steam generation, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes, namely, lighting installations, heating installation, steam generating installations, microwave ovens, refrigerator, freezing device, namely, freezers, dryer for industrial use, namely, dryer for drying paint, dryer for drying coatings, air dryer for drying clothes, air dryer for drying hands, air dryer for drying hair
Class 35: advertising services; marketing services; business management consultation; providing office functions; business administration services; retail store services featuring a wide variety of consumer goods of others; analysis of market research data and statistics; marketing research, studies, analysis and assessment; providing advertising, marketing and promotional services, namely, experiential or immersive advertising, promotional, and marketing campaigns for others; data acquisition and collection for use in the field of advertising and marketing; technical consultation in the field of marketing campaigns and experiential marketing experiences; technical business consultation related to retail and dining experiences
Class 37: building construction services; repair and installation of multi-view electronic displays and electronic apparatuses and systems related thereto; technical consultation in the field of installation and maintenance of lighting apparatus, lighting instruments, and lighting systems
Class 38: communication services, namely, electronic data transmission; technical consultation in the field of content distribution and delivery, namely, electronic data transmission; technical consultation in the field of electronic transmission of content distribution and delivery, namely, electronic dissemination and delivery of audio, video or media content to users via television, handheld device, mobile device, connected device, computer, or computer network
Class 41: education services, namely, conducting classes, seminars, conferences, and workshops in a live and virtual environment in the field of sports, culture, and personal enrichment; entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, multimedia entertainment content, and live visual and audio performances, namely, in the field of sports, culture, and personal enrichment; training services in the field of sports and personal enrichment; cross-cultural training; gambling services
Class 42: Scientific and technological services, namely, research and design in the field of computer systems; industrial analysis and research services in the field of fiber optics; design and development of computer hardware and software
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.
Kathleen Schwarz
/Kathleen Schwarz/
Examining Attorney
Law Office 123
(571) 272-2460
kathleen.schwarz@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.