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: 5/16/2018

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE RECORDS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:

·       Requirement for Acceptable Identification of Goods

 

REQUIREMENT FOR AN ACCEPTABLE IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  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).

 

The following wording is unacceptable:

 

Motion picture films – This wording must be amended to identify the subject matter or area of the films, e.g., “featuring drama and action,” “featuring children’s entertainment,” “featuring comedies,” etc.

 

pre-recorded DVDs, high-resolution DVDs, and high-definition DVDs – Again, as with the above, the subject matter or field of the goods must be identified. 

 

pre-recorded CDs – And, again, the subject matter or area of the CDs must be identified, e.g., “featuring music,” “featuring educational material regarding history,” etc.

 

downloadable audio and video recordings – Again, the subject matter or area of the goods must be identified as indicated above.

 

downloadable motion pictures, television shows, and video recordings – And again, as with the above, the wording must be amended to indicate the subject matter or area of the goods. 

 

computer software – This wording must be amended to indicate the function and field of use, if applicable, of the software, e.g., “used for data management in the field of music,” “computer game software,” etc.

 

downloadable computer software – As with the above, this wording must be amended to indicate the function of the software as well as the field of use, if applicable.

 

video games – This wording must be amended to identify the goods with more specificity, e.g., “video game software,” “video game discs,” “video game cartridges,” etc.

 

downloadable computer software applications for mobile devices – Again, this wording must be amended to indicate the function of the software as well as the field of use, if applicable.

 

mobile applications – This wording must be amended to indicate that these goods are either “downloadable” or that they are “mobile software applications.”  Additionally, the function and field of use, if applicable, must be identified.

 

downloadable electronic publications – This wording must be amended to identify the type of publications, e.g., “magazines,” “brochures,” “journals,” etc., as well as indicate the subject matter or field of the goods.

 

Applicant may adopt the following identification of goods (noting that the wording which should be deleted is in strikethrough, while newly-added wording is in bold, and appropriate wording should be provided by applicant where a “blank space” (underline) is indicated): 

 

Motion picture films featuring _________ {identify subject matter or area of films, e.g., drama, action, comedy, etc.}; pre-recorded DVDs, high-resolution DVDs, and high-definition DVDs featuring _________ {identify subject matter or area of goods, e.g., drama, action, comedy, etc.}; pre-recorded CDs featuring _________ {identify subject matter, e.g., music}; downloadable audio and video recordings featuring _________ {identify subject matter, e.g., music}; downloadable motion pictures, television shows, and video recordings featuring _________ {identify subject matter or area of goods, e.g., drama, music, etc.}; downloadable ring tones, graphics, computer desktop wallpaper, games and music via a global computer network and wireless devices; computer game software; downloadable computer game software; computer games software; video games software; computer screen saver software; computer games; video games software; downloadable computer game software applications for mobile devices; mobile software applications for _________ {identify function of applications, e.g., used for database management} in the field of _________ {indicate the field or subject matter, e.g., music}; downloadable electronic publications, namely, _________ {identify specific publications, e.g., magazines} in the field of _________ {indicate subject matter, e.g., music}; mousepads; decorative magnets

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, 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 such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

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 – PARTIAL REFUSALS/REQUIREMENTS

 

For this application to proceed further for the full list of applicant’s goods, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, the following goods will be deleted from the application: 

 

• Motion picture films
• pre-recorded DVDs, high-resolution DVDs, and high-definition DVDs
• pre-recorded CDs
• downloadable audio and video recordings
• downloadable motion pictures, television shows, and video recordings
• computer software
• downloadable computer software
• video games
• downloadable computer software applications for mobile devices
• mobile applications
• downloadable electronic publications

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a).  The application will then proceed with the following goods only: 

 

• Downloadable ring tones, graphics, computer desktop wallpaper, games and music via a global computer network and wireless devices; computer games software; video games software; computer screen saver software; computer games; mousepads; decorative magnets

 

See TMEP §718.02(a).  In such case, an applicant may timely file a petition to revive the abandoned goods, which, if granted, would allow for the reinsertion of these goods into the application.  See 37 C.F.R. §2.66; TMEP §§718.02(a), 1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  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. §2.191; 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

 

 

 

 

 

 

 

/Susan K. Lawrence/

Susan Kastriner Lawrence

Trademark Examining Attorney

Law Office 116, 571-272-9186

sue.lawrence@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 5/16/2018 FOR U.S. APPLICATION SERIAL NO. 87792116

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/16/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Susan K. Lawrence/

Susan Kastriner Lawrence

Trademark Examining Attorney

Law Office 116, 571-272-9186

sue.lawrence@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.