To: | INTERNATIONAL DATA GROUP, INC. (trademark_docket@idg.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87823481 - PCWORLD EDITORS' CHOICE - IDG 18-003 |
Sent: | 6/29/2018 5:07:24 PM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87823481
MARK: PCWORLD EDITORS' CHOICE
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CORRESPONDENT ADDRESS: INTERNATIONAL DATA GROUP, INC. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: INTERNATIONAL DATA GROUP, 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: 6/29/2018
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(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
INDENTIFICATION AND CLASSIFICATION OF SERVICES
Applicant has identified and classified the following services in International Class 42:
“PRODUCT TESTING; PRODUCT AND SERVICE REVIEWS; PROMOTING THE GOODS AND SERVICES OF OTHERS AND PRODUCT RECOGNITION IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY; AWARDS PROGRAM IN RECOGNITION OF EXCELLENCE FOR PRODUCT AND SERVICES IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY; PRODUCT RECOGNITION OF EXCELLENCE FOR PRODUCT AND SERVICES IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY; PROVIDING RECOGNITION AND INCENTIVES BY THE WAY OF AWARDS TO DEMONSTRATE EXCELLENCE IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY; REVIEWS AND RECOMMENDATIONS ON PRODUCTS AND SERVICES IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY;”.
The identification of services is indefinite and must be clarified because it is too broad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the wording “PRODUCT AND SERVICE REVIEWS” and “REVIEWS AND RECOMMENDATIONS ON PRODUCTS AND SERVICES IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY” must be clarified because the type of service is unclear. Also, the classification of the identified services is inaccurate.
Applicant may substitute the following wording, if accurate. Additionally, the proper classification for each item is as follows. The proposed additions to applicant’s identification appear in bold type.
International Class 35: “PROMOTING THE GOODS AND SERVICES OF OTHERS WITH PRODUCT AND SERVICE REVIEWS; PROMOTING THE GOODS AND SERVICES OF OTHERS AND PRODUCT RECOGNITION IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY; PROMOTING THE GOODS AND SERVICES OF OTHERS, NAMELY, PROVIDING REVIEWS AND RECOMMENDATIONS ON PRODUCTS AND SERVICES IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY”
International Class 41: AWARDS PROGRAM IN RECOGNITION OF EXCELLENCE FOR PRODUCT AND SERVICES IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY; PRODUCT RECOGNITION OF EXCELLENCE FOR PRODUCT AND SERVICES IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY; PROVIDING RECOGNITION AND INCENTIVES BY THE WAY OF AWARDS TO DEMONSTRATE EXCELLENCE IN THE FIELD OF COMPUTERS, COMPUTING, COMPUTER SOFTWARE, COMPUTER HARDWARE, COMPUTER SECURITY, DATA STORAGE, CLOUD COMPUTING, DATA SECURITY, SERVERS, ONLINE SERVICES, HIGH TECHNOLOGY, COMMUNICATIONS, INFORMATION TECHNOLOGY, INFORMATION SERVICES, MOBILE DEVICES, TELECOMMUNICATIONS, INTERACTIVE ENTERTAINMENT, CONSUMER ELECTRONICS, CONSUMER TECHNOLOGY, HOME THEATER EQUIPMENT, PHOTOGRAPHIC EQUIPMENT, VIDEO EQUIPMENT, AUDIO EQUIPMENT, MOBILE APPLICATIONS, PORTABLE ELECTRONIC DEVICES, SOCIAL MEDIA, VIDEO GAMES, AND EMERGING TECHNOLOGY;
International Class 42: “PRODUCT TESTING”.
Additionally, applicant has provided the application fee for only one international class. Thus, not all international classes in the application are covered by the application fee. Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international classes to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the one international class for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
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.
Advisory: CLASSIFICATION OF SERVICES
Advisory: MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
The mark consists of a red irregular upside down pentagon containing the wording
“PCWorld” in black letters above a black horizontal line. and a shaded line separating Below the line is the word “EDITORS'” in white letters and below “EDITORS” is the word “CHOICE” in white
letters.
An editor is the person who is in charge of a newspaper or magazine and who decides what will be published in each edition of it. See attached dictionary definition from Collins. Choice is defined as the act of choosing. See attached dictionary definition from Merriam-Webster. Applicant’s identified services include “PRODUCT AND SERVICE REVIEWS” and “AWARDS PROGRAM IN RECOGNITION OF EXCELLENCE FOR PRODUCT AND SERVICES”. The wording “EDITORS’ CHOICE” merely describes a feature of applicant’s services because applicant, the editor of the magazine, offers reviews, awards, and recognition for the goods and services of others that applicant chooses.
Additionally, the attached evidence from IGN.com, CNET.com, PCmag.com, and ComputerTimes.com shows this wording is commonly used in connection with similar goods and services. Therefore, the wording merely describes a feature of applicant’s services.
An applicant may not claim exclusive rights to terms that others may need to use to describe their services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “EDITORS’ CHOICE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
LEGAL COUNSEL SUGGESTED
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
GENERAL RESPONSE GUIDELINES
For this application to proceed further, 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 those 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, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §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).
/Brittany Johnson/
Examining Attorney
Law Office 126
(571) 270-3731
brittany.johnson@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.