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: 8/20/2018
The referenced application has been
reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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).
SUMMARY OF ISSUES:
- Classification and Identification of Goods and Services Requirement
- Multiple-Class Application Requirements
- Amended Description of Mark Required
- Application Not Signed or Dated
CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
The following requirement is limited only to the specified goods and services below.
The identification requires clarification as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
International Class 9
The following wording in the identification of goods for International Class 9 is indefinite and must be clarified:
- “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking supervision, life-saving and teaching apparatus and
instruments, namely, apparatus for producing sound, images or data, namely, radios, televisions, computers, cameras, telephones and telephone systems, smart phones and tablets”: The wording
“telephone systems” is indefinite as the nature of the systems is unclear. Applicant must specify the components of the telephone systems. Additionally, the wording
“tablets” is indefinite and overly broad, as it could indicate goods in other classes. For example, “PC tablets” in Class 9 or “writing tablets” in Class 16, among others. A suggestion has been made
below in Class 9.
- “Prerecorded magnetic data carriers featuring data, information, music, video and audio”: The wording is indefinite as not all of the subject matter featured on the data
carriers is specified. In particular, applicant has used the wording “featuring data, information” and “video and audio” which is too open-ended to be considered definite. A suggestion has been made
below.
- “Digital recording media, namely, CDs, DVDs, laser discs, video tapes, audio tapes, diskettes, computer disks, optical disks, optical recording disks, smart cards,
magnetic data carriers, optical data carriers, USB devices and Solid State Drives featuring music, videos, audio, images, text and metadata”: The wording is indefinite because the subject matter of
the “videos, audio, images, text” on the various media is not specified. A suggestion has been made below.
- “Downloadable electronic publications in the nature of periodicals, newsletters, magazines, advertisements, reports, marketing materials and pamphlets in the field of
telecommunications, home and office connectivity solutions, automation systems, computing and data storage, processing and data security and information technology”: The wording is indefinite because
the nature of the “marketing materials” is not specified. This wording could describe a broad range of items from pamphlets to billboards. A suggestion has been made below.
- “Apparatus for accessing the internet and telecommunications systems, namely, computers, mobile and cellular phones, tablets, routers,
switches, hubs, servers, ports, firewalls, and modems”: The wording “tablets” is indefinite and overly broad, and could indicate goods in other classes. For example, the wording could indicate PC
tablets in Class 9 or ‘writing tablets” in Class 16. In addition, the wording “routers, switches, hubs, servers, ports” is indefinite and overly broad, as the nature
of the goods covers a wide array of electronic goods and further clarification is required. For example, “routers” could indicate “power tools, namely, routers” in Class 7 or “network routers” in
Class 9. “Switches” could indicate “pressure switches as parts of machines” in Class 7 or “telecommunications switches” in Class 9. “Hubs” could indicate “computer network hubs”, “communication
hubs”, or “digital media hubs” in Class 9. “Servers” could indicate “internet servers”, “video servers”, or “computer servers” in Class 9. “Ports” could indicate “computer serial ports”, “USB
charging ports”, or “computer parallel cports” in Class 9. In addition, the wording “firewalls” is indefinite because the entry could cover software or computer hardware and, while downloadable
software and computer hardware are classified in Class 9, non-downloadable software is a service classified in Class 42. A suggested amendment has been made
below.
- “Hardware for streaming audiovisual and multimedia content via the internet and global communications networks, namely, digital media streaming devices, digital video
recorders, DVD and high definition video disc players, home theater systems comprised of audio and video receivers and disc players”: The wording is indefinite because the type of “disc players” at
the end of the entry is not specified. For example, the wording may cover compact disc players, video disk players, or universal disc players. A suggestion has been made below.
- “Televisions, television set-top boxes, dongles and broadband wireless adapters”: The wording “dongles” is indefinite as the nature of the goods is unclear. Applicant must use the common commercial or generic names for the goods. In addition, applicant must further identify the use of the wireless broadband
adapters (e.g., that the adapters are network adapters, used to link televisions to a telecommunications network, or for use as a high definition multimedia interface). A suggested amendment has been
made below.
- “Multichannel video programming distribution devices and applications”: This wording is indefinite as the nature of the “video programming” and “distribution” is unclear.
The wording “video programming” could describe either video content or the act of programming devices to display or create video. The wording “distribution” could describe broadcasting across a
number of media, such as television or the Internet, or sharing of video files using electronic storage media. Further, the nature of the “devices and applications” is unclear; applicant must specify
the common commercial or generic name of the “devices and applications”. 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). A
suggested amendment in Class 9 has been made below.
International Class 35
The following wording in the identification of goods for International Class 9 is indefinite and must be clarified:
- “Advertising”: The wording is indefinite and overly broad, and could indicate goods and services in multiple classes. For example, the
wording could indicate printed advertisements in Class 16 or advertising services for others in Class 35. A suggested amendment in Class 35 has been made below.
- “Merchandising services, namely, product merchandising, sales promotion for others”: The entry is indefinite because the wording “product merchandising” does not indicate
that it is a service for others. Applicant must specify that its product merchandising does not cover the sale of applicant’s own goods or applicant’s own goods that are given away for promotional
purposes. TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re
Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985). A suggested amendment has been included below.
- “Commercial business management and commercial corporate management for third parties in particular in the areas of energy, gas, water”: The entry is indefinite and
overly broad because the wording “commercial corporate management” could indicate services in other classes. For example, the wording could describe “commercial
corporate business management services” in Class 35, “commercial corporate financial management services” in Class 36, or “commercial corporate information technology management services” in Class
42. A suggested amendment in Class 35 is made below.
- “Retail store services and online retail store services featuring machines for the household and commercial sector, namely, washing machines and dishwashers, washers for
the industrial and the household sector, namely, washing machines and dishwashers, electric kitchen machines, electric cleaning apparatus for household purposes, scientific, nautical, surveying,
photographic, cinematographic, optical, weighing, measuring, signaling, checking life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming,
accumulating, regulating or controlling electricity, apparatus for the recording, the transmission, the processing and the reproduction of sound, images or data, electrotechnical components,
electrotechnical equipment, apparatus and instruments, namely, telecommunications equipment and information technology equipment, motor vehicle automation equipment, automation equipment for
buildings, security systems automation equipment, software for monitoring and controlling appliances, electric equipment, apparatus and instruments for the transmitting of commands, magnetic data
carriers, mechanisms for coin operated apparatus, calculating machines, data processing equipment, computers, recorded and unrecorded data carriers, CDs, DVDs and other digital recorded media,
recorded computer programs, computer software, including downloadable computer game programs, downloadable electronic publications, electronic components for motor vehicles, computer software for
medical apparatus and instruments, medical apparatus and instruments, orthopedic articles, apparatus for use in medical analysis, medical apparatus and instruments for patient monitoring and
displaying patient's vital signs, medical measuring apparatus and parts thereof, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply, motor
vehicles and parts thereof, printed matter, photographs, office requisites except furniture, instructional and teaching material except apparatus, games, including video games, apparatus for games,
software for streaming audiovisual and multimedia content via the internet and global communications networks, software for streaming audiovisual and multimedia content to mobile digital electronic
devices, software for searching, organizing, and recommending multimedia content, computer software, namely, software development tools for creating software and mobile applications, hardware for
streaming audiovisual and multimedia content via the internet and global communications networks, namely, digital media streaming devices, digital video recorders, DVD and high definition video disc
players, home theater systems comprised of audio and video receivers and disc players, televisions, television set-top boxes, dongles and broadband wireless adapters, multichannel video programming
distribution devices and applications”:
-
- First, the identification of services in the application includes unacceptably broad wording from the class headings of one or more international
classes that must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1401.08. The USPTO considers class headings, whose sole purpose is to
indicate the subject matter and general scope of each international class of goods, to be too broadly worded to identify goods in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298-99 (TTAB 1986), rev’d on other
grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.02(a), 1401.08, 1402.01 et seq., 1402.07(a). In this case,
the wording could identify goods in multiple classes. For amendments to identifications consisting of class headings, the scope of the identification is limited to the ordinary meaning of the words
in the heading. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1598 (TTAB 2014); TMEP
§§1402.06(a), (b), 1402.07(a). Accordingly, applicant must amend the class headings to identify specific goods that fall within the ordinary meaning of the words
specified in the class headings. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06(a), (b), 1402.07(a).
- In particular, the following goods featured in applicant’s retail store services must be clarified:
-
- “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking life-saving and teaching apparatus and instruments”:
this entry describing a good for sale at applicant’s stores is indefinite because it is not clear from the wording what the goods are. Applicant should use the common commercial or generic name of
the specific goods.
- “Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity”: this entry describing a good for sale at
applicant’s stores is indefinite because it is not clear from the wording what the goods are. Applicant should use the common commercial or generic name of the specific goods.
- “Electrotechnical components, electrotechnical equipment”: this entry describing goods for sale at applicant’s stores is indefinite and overly broad, because it is not
clear from the wording what the goods are and could describe a broad array of goods. Applicant should use the common commercial or generic name of the specific goods.
- “Apparatus and instruments, namely, telecommunications equipment and information technology equipment”: this entry describing goods for sale at applicant’s stores is
indefinite because it is not clear from the wording what the goods are. Applicant should use the common commercial or generic name of the specific goods.
- “Electric equipment”: this entry describing a good for sale at applicant’s stores is indefinite and overly broad, because it is not clear from the wording what the goods
are and could describe a broad array of goods. Applicant should use the common commercial or generic name of the specific goods.
- “Apparatus and instruments for the transmitting of commands”: this entry describing goods for sale at applicant’s stores is indefinite and overly broad, because it is not
clear from the wording what the goods are, and could describe a broad array of goods. Applicant should use the common commercial or generic name of the specific goods.
- “Other digital recorded media”: The wording “other” in the identification of goods is indefinite
and must be clarified by (1) specifying the common commercial or generic name for these goods, or (2) deleting this wording. See 37 C.F.R. §2.32(a)(6); TMEP
§§1402.01, 1402.03(a). This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar goods,” “and related goods”) that is not acceptable
because it fails to identify specific goods. See TMEP §1402.03(a). In an identification, an applicant must use the common commercial or generic
name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP§§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the category of goods set forth in the initial application or as
acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the
ordinary meaning of the wording in the identification. TMEP §1402.07(a). Further, the wording is indefinite because the content of the media is not specified, e.g.,
music, video, e-books.
- “Medical apparatus and instruments”: this entry describing goods for sale at applicant’s stores is indefinite and overly broad because it is not clear from the wording
what the goods are and could describe a broad array of goods. Applicant should use the common commercial or generic name of the specific goods.
- “Orthopedic articles”: this entry describing goods for sale at applicant’s stores is indefinite and overly broad because it is not clear from the wording “articles” what
the goods are and could describe a broad array of goods. Applicant should use the common commercial or generic name of the specific goods.
- “Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply”: this entry describing a good for sale at applicant’s
stores is indefinite and overly broad, because it is not clear from the wording what the goods are and could describe goods in other classes. Applicant should use the common commercial or generic
name of the specific goods.
- “Instructional and teaching material except apparatus”: this entry describing a good for sale at applicant’s stores is indefinite and overly broad, because it is not
clear from the wording what the “material” or the excepted “apparatus” are; thus, the wording could describe a broad array of goods. Applicant should use the common commercial or generic name of the
specific goods.
- “Accountancy, namely, office functions”: This entry is indefinite because the wording is incongruous. “Office functions” are generally broader than “accountancy” but the
wording appears after the word “namely” instead of before. This appears to be two separate entries mistakenly joined by the word “namely”. The entries have been separated below as a suggestion. The
first entry, “accountancy”, is acceptable; however, the wording “office functions” could potentially describe activity for applicant’s own behalf. Therefore, as noted above, applicant must specify
that it is providing office functions for others. A suggested amendment to that effect is made below.
- “Services provided by an e-commerce operator, namely, order processing services, administrative processing of delivery orders and accountancy for electronic ordering
systems”: The entry is indefinite as the specific nature of the “order processing services” is unclear and could indicate a service for applicant’s own behalf, i.e., processing orders for applicant’s
own goods, rather than a service for others as required above. A suggested amendment has been made below.
International Class 38
The following wording in the identification of goods for International Class 9 is indefinite and must be clarified:
- “Providing electronic telecommunication connections and network connectivity services”: This entry is indefinite and overly broad as the nature of the “network
connectivity services” is unclear and could indicate services in other classes. For example, “providing telecommunications connections to a global computer network” is in Class 38 and “network help
desk services” are in Class 42. A suggested amendment in Class 38 is made below.
- “Consulting in the field of telecommunication services, namely, transmission of voice, data, documents and multimedia items via transportation connectivity, automation,
security and energy efficiency”: The entry is unclear because while it appears to identify a consulting service initially, the wording that follows “namely” also appears to identify an independent,
separate service. It is suggested that applicant add “consulting on” after “namely” to clarify the entry. In addition, the wording “via transportation connectivity,
automation, security and energy efficiency” is indefinite, as it is unclear how the wording that follows “via” describes the media through which the “voice, data, documents and multimedia items” can
be transmitted. It appears that applicant may have inadvertently omitted the means of transmitting the “voice, data, documents and multimedia items” (i.e., the Internet or wireless networks) and that
what follows are the specialized areas of “transportation connectivity, automation, security and energy efficiency”. A suggested amendment to that effect in Class 38 has been
made below.
- “Telecommunications consultation services in the fields of automation equipment for home, work, and travel”: This entry is indefinite and overly broad, because the field
of consultation is unclear and could describe services in multiple classes. For example, “telecommunications consultation services in the fields of
telecommunications automation equipment for home, work, and travel” is in Class 38, while “consultation services in the field of home and office automation” is in Class 42. A suggested amendment in
Class 38 is made below that clarifies the consultation is for telecommunications automation equipment.
- “Provision of technical support concerning the use of communication equipment”: The wording is indefinite and overly broad, and generally indicates services in other
International Classes. For example, the wording could describe “technical support services, namely, troubleshooting in the nature of the repair of computer hardware” in Class 37 or “troubleshooting
of computer software problems” in Class 42. Suggested amendments in Classes 37 and 38 have been made below.
- “Business telecommunications, namely, providing long distance, local and voice telecommunications services”: This entry is indefinite because the nature of the “long
distance”, “local” and “voice” services is not clear from the wording. Applicant must indicate the type of service, such as “long distance telephone services, local telephone services, and
transmission of voice by wireless networks,” or indicate the type of transmission of the long distance, local and voice telecommunication, such as “local and long distance transmission of voice,
data, graphics and video by means of broadband, copper, and optical or wireless networks”. A suggested amendment has been made below.
- “Providing online chat rooms”: The wording is indefinite as the purpose of the chat rooms is unclear. Applicant must specify the purpose
of the chat rooms, such as “for social networking” or “for real-time interaction with other users concerning topics of education. A suggested amendment in Class 38 has been made below.
- “Electronic mail services”: The wording is indefinite and overly broad, as it could indicate services in multiple classes. For example,
the wording could indicate “advertising, promotion and marketing services in the nature of e-mail blast campaigns for others” in Class 35, “electronic transmission of email” in Class 38, or “computer
services, namely, redirecting electronic mail to changed personal electronic address” in Class 42. A suggested amendment in Class 38 has been made below.
- “Providing telecommunications connections to the internet and other computerized communications, data and wireless networks”: The wording “and other” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,”
“particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be
specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific
services. See TMEP §1402.03(a). Further, the nature of the “telecommunications connections” is unclear from the wording. A suggested amendment
in Class 38 has been made below.
- “Video and audio teleconferencing via the internet, asynchronous transfer mode (ATM) services, integrated service digital network (ISDN) services, internet protocol (IP)
communications services, virtual private network (VPN) services and private line services”:
-
- First, this entry is indefinite because it appears to contain multiple separable services. In general, commas should be used in an identification (1)
to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following
“namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion;
deodorizers for pets; glass cleaners). Id.
- Further, the wording in the entry contains multiple indefinite or overly broad services that could indicate services in other classes:
-
- “Asynchronous transfer mode (ATM) services”: this entry is indefinite as the nature of the services is unclear and could encompass services in multiple international
classes. A suggestion of “asynchronous transfer mode (ATM) services, namely, the transmission of information by electronic communications networks” is made below.
Asynchronous transfer mode (ATM) banking services are classified in Class 36.
- “Internet protocol (IP) communications services”: This entry is indefinite and overly broad as it could indicate services in other classes. For example, the wording could describe “voice over internet protocol (VOIP) services” in Class 38, “providing entertainment services in the nature of ongoing Internet Protocol
Television (IPTV) television programming segments” in a particular field in Class 41, or “computer services, namely, internet protocol address management” in Class 42. A suggested is made below in
Class 38.
- “Private line services”: This entry is indefinite as the nature of the “private line” service is not clear from the wording. A suggested amendment of “private line
services, namely, providing private and secure electronic communications over a private or public computer network” in Class 38 is made below. Private line services may encompass a variety of
services related to private lines, such as maintenance of the telecommunication networking hardware, a Class 37 service, or development and updating of the telecommunication private line software, a
Class 42 service.
- “Switched voice, data, video and multimedia services”: The entry is indefinite as the nature of the “switched” services is unclear.
Applicant must provide more information on the nature of the services. A suggestion of “worldwide switched voice, data, video, and multimedia transmission services” in Class 38 is made below.
- “Providing facsimile services”: This wording, similar to “electronic mail services” above, is indefinite and overly broad, as it could indicate services in multiple
classes. For example, this wording could describe “facsimile ordering services in the field of clothing” in Class 35, “repair of facsimile machines” in Class 37, or
“facsimile transmission services” in Class 38. A suggested amendment in Class 38 has been made below.
- “Telecommunications services, namely, providing toll free services and call routing services”: The entry is indefinite and overly broad and could indicate services in
other classes. For example, “promoting the goods and services of others by licensing a toll-free telephone number” is in Class 35, while “providing toll-free
mnemonic telephone numbers” is in Class 38. Additionally, “routing telephone calls to local third-party taxi-cab dispatchers in the vicinity of the caller” and “call routing services in the nature of
call forwarding services” are both in Class 38. Applicant must further describe each part of the entry. A suggested amendment of the entry within Class 38 has been made below.
- “Video, audio and data telephone conference services”: The wording is indefinite and overly broad, as the nature of the “conference services” is unclear and could
indicate services in other classes. For example, “video, audio and data telephone conferencing services” is in Class 38 but “educational services, namely, conducting
seminars and conferences in person, online and via telephone in the field of mathematics” is in Class 41.
- “Telecommunication services for others, namely, services relating to automation systems and equipment, namely, home automation, workplace connectivity and integration,
travel, transport and logistic solutions, public sector solutions, energy efficiency solutions, multimedia distribution, health solutions, security systems, application performance management,
consulting services, installation services, data hosting services, network connectivity services, and network performance enhancement services, application operations and management services, web,
social and mobility enabling services, and data management services” : The wording is indefinite as the nature of the services is unclear. The wording “services relating to” in the identification of services is indefinite and must be clarified by (1) specifying the common commercial or generic name for
these services, or (2) deleting this wording. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). This wording is an
open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar services,” “and related services”) that is not acceptable because it fails to identify specific services. See TMEP §1402.03(a). In an identification, an applicant must use the common commercial or generic name for the
services, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP §§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the services set forth in the initial application or as acceptably
amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary
meaning of the wording in the identification. TMEP §1402.07(a). As written, the entry also appears almost incongruous as to whether applicant is offering a
particular telecommunication service or a variety of services that follow “namely”. If offering a telecommunications consultation service that relates to
telecommunications equipment, a suggested amendment in Class 38 has been made below.
- “Providing access to online forums for transmission of messages and blogs over the Internet”: The entry is indefinite and overly broad because the wording “transmission
of …blogs” could describe services in multiple classes. For example, the wording could describe “providing internet access to users to access online forums for
transmission of messages and transmission of blogs” via the Internet in Class 38 or “providing internet access providing an online journal, namely, blogs” featuring a particular subject matter in
Class 41. A suggestion has been made below.
- “Video-on-demand transmission services”: Applicant is advised to delete or modify this
duplicate entry in the identification of services. See generally TMEP §§1402.01, 1402.01(a). If applicant
does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend
it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted services may not later be reinserted. TMEP
§1402.07(e).
International Class 41
The following wording in the identification of goods for International Class 9 is indefinite and must be clarified:
- “Entertainment, namely, providing musical, variety, news, and comedy performances via global telecommunications networks”: The entry is indefinite and overly broad
because the format of the performances is not specified. For example, the wording could indicate “downloadable recorded performances of music and comedy” in Class 9 or “providing online,
nondownloadable recordings of musical, variety, news, and comedy performances via global telecommunications networks” in Class 41. A suggested amendment in Class 41 is made below.
- “Education and entertainment services, namely, providing information via a global computer network in the field of entertainment and entertainment-related topics”: The
wording is indefinite as the nature of the information services is unclear. The wording “entertainment-related” is open-ended and fails to identify specific services. Information services are
classified according to their subject matter, so applicant must specify the topics within Class 41 only, as advertising and commercials would indicate applicant is providing an information service in
Class 35. A suggested amendment has been made below.
- “Providing a website featuring non-downloadable audio, video and audiovisual content in the nature of recordings featuring movies, TV shows, videos and music”: The
wording “videos” near the end of the entry is indefinite because the subject matter of the videos has not been specified. A suggestion has been made below.
- “Entertainment services, namely, providing temporary use of non-downloadable online video”: This entry is indefinite because the subject matter of the video is
unspecified. A suggested amendment has been made below.
- “Provision of non-downloadable videos featuring programs on a wide variety of entertainment topics via a video-on-demand service”: This entry is indefinite because the
wording “on a wide variety of entertainment topics” is an open-ended, catch-all phrase. Videos are commonly considered entertainment. Applicant must specify the subject of the programs in its videos.
The general categories may be specified, such as “children’s entertainment” or “adult entertainment”. A suggestion is made below.
- “Wireline telecommunications”: The services are classified incorrectly. Applicant must amend the application to classify the services in International Class 38. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP
§§1401.02(a), 1401.03(b). Further, the wording is indefinite as the nature and purpose of the services is unclear. Applicant must specify the common commercial or
generic name of the services. A suggested amendment in Class 38 has been made below
- “Broadband and information services including voice and data services”: This wording appears misclassified, and is indefinite and overly broad because it could indicate
services in multiple classes. Generally, broadband Internet services and information about said services are both classified in Class 38. As currently worded, it is unclear what service applicant is
offering. For example, the wording could describe “providing promotional marketing services to businesses in the broadband industry” in Class 35, or “wireless broadband communication services” or
“providing information about broadband voice and data telecommunications services” in Class 38. A suggested amendment in Class 38 has been made below.
- “Video services including multichannel video programming”: The wording is indefinite and overly broad, as it could indicate services in multiple classes. For example, the wording could describe “video production services in the field of employment recruiting” in Class 35, “video-on-demand transmission services” in Class 38, or
“video services, namely, providing on-line, non-downloadable multichannel video programming in the nature of motion pictures and television shows” in Class 41. A suggested amendment in Class 41 has
been made below.
International Class 42
The following wording in the identification of goods for International Class 9 is indefinite and must be clarified:
- “Industrial analysis and research services in the field of telecommunications, automation systems and information technology”: This entry is indefinite and overly broad
because the wording “industrial analysis” is too broadly worded. The wording could indicate services in multiple classes. For example, “business analysis in the
field of telecommunications, automation systems and information technology” is in Class 35 and “analysis of telecommunications equipment to assure compliance with industry standards” is in Class 42.
A suggested amendment in Class 42 is made below.
- “Computer services in connection with electronic data storage”: The wording is indefinite and overly broad, as the wording could describe services in multiple
classes. It is suggested that applicant amend the entry to “computer services in the nature of electronic data storage” in Class 42 or further specify the common
commercial name of the computer service provided. A suggested amendment in Class 42 is made below.
- “Performance of chemical analysis and technical tests and checks related thereto”: The wording “technical tests and checks related thereto” is indefinite as the subject
matter and purpose of the “technical tests and checks” is unspecified. Applicant must provide or clarify the subject matter of the tests and checks being
performed. In addition, as to “checks,” the nature of the service is unclear. For example, applicant may clarify that applicant is
performing an inspection or an evaluation of a certain good and the purpose of the inspection or evaluation. A suggested amendment separating the entry into two
entries for clarity has been made below, as “performance of chemical analysis and technical testing of chemicals; inspection of chemicals for quality control purposes”.
- “Technical monitoring of industrial plants in the fields of energy, gas, water and technical monitoring of heat generation plants”: The wording is indefinite and overly
broad, as the nature of “technical monitoring” is unclear and could indicate services in other classes. For example, applicant could be identifying “technical
monitoring of industrial plants in the fields of energy, gas, water and technical monitoring of heat generation plants for repair and maintenance” in Class 37. However, quality control monitoring
services for such plants are classified in Class 42. A suggested amendment in Class 42 has been made below.
- “Providing online computer consultation, namely, providing information about computer networks for the area of computer networking”: The wording is incongruous, as
applicant appears to be indicating it is offering consulting “for the area of computer networking” is in the field of computer networking. However, applicant also identifies that it is ultimately
offering information as opposed to a consultation service. Further, while offering information on computer technology is a service in Class 42, information on
transmission of information over computer networks is classified in Class 37, and information on the actual installation of computer networking hardware is a service in Class 38. A suggested
amendment is made below that clarifies the entry.
- “Consultancy relating to the design and development of computer software and hardware architecture, including consultancy relating to computer database programs”: The
wording “including consultancy relating to computer database programs” is indefinite as the nature of the services is unclear and the wording “including” and “relating to” is “open-ended” and
“catch-all” in nature, as noted above. Applicant should amend the wording to be precise and definite. A suggested amendment is included below.
- “Technological services, namely, metering in relation to telemetering, remote metering, meter reading systems and smart metering”: The wording “in relation to” is a
“catch-all term” which must be clarified, as noted above. Further, the wording is indefinite as the nature of the metering services is unclear. Applicant must
specify the nature or the common commercial name of the services. For example, further clarifying the subject matter or type of metering service, such clarifying that the metering is electric meter
reading, water meter reading, or utility meter reading services, would be acceptable. A suggested amendment has been made below.
- “Telecommunications technology consultancy, information technology consulting services”: Applicant must correct the punctuation in the identification to clarify the individual items in the list of services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each service within a list and
to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an
identification. Id. In addition, applicants should not use symbols in the identification such as asterisks
(*), at symbols (@), or carets. Id. Here, it appears applicant has separated independent services with a
comma instead of a semicolon. In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of
services, (2) before and after “namely,” and (3) between each item in a list of services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of services
within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id. A suggested amendment has been made below substituting a semicolon for applicant’s comma.
Suggested Amendments to the Identification of Goods and Services
Applicant may substitute the following wording, if accurate:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking supervision, life-saving and teaching apparatus and instruments, namely, apparatus for producing sound, images or data, namely, radios, televisions,
computers, cameras, telephones and telephone systems comprising {specify component parts of the systems, e.g., “computer hardware”}, smart phones and
PC tablets; apparatus for the recording, transmission, processing and reproduction of sound, images or data; electrotechnical components, namely, electrotechnical vibration
meters; electrotechnical equipment, apparatus and instruments, namely, telecommunications equipment and information technology equipment, and motor vehicle automation equipment, namely, computer
software for operating and controlling cruise controls for motor vehicles, navigation apparatus for vehicles in the nature of on-board computers, navigational instruments for vehicles, computer
software and sensors for monitoring and recording vehicle wear and fuel efficiency, electronic sensors for anti-theft automotive alarms, remote control transmitters and receivers for remotely
operating land vehicles, remote control starters for vehicles, simulators for driving or the control of vehicles, sound equalizers and temperature control systems, namely, climate control systems
consisting of digital thermostats for cooling equipment, and a programmable logic controller (PLC) with input and output features for temperature and humidity, which works with a remote digital read
out controller; automation equipment for buildings, namely, wireless remotes for monitoring temperature and humidity in buildings, wireless and wired controllers, controlled devices, and software for
appliances, lighting, HVAC, security and other home and office electrical power monitoring and control applications; security systems automation equipment, namely, building security systems
comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; software for monitoring and controlling home appliances,
lighting, thermostats, heating, cooling, ventilation, security and electrical power use; blank magnetic data carriers; mechanisms for coin operated apparatus; calculating machines, data processing
apparatus, computers; blank optical data carriers; prerecorded magnetic and optical data carriers featuring operating software for use with telecommunication computers, household automation systems,
and information technology computers; prerecorded magnetic data carriers featuring data, and information in the nature of, music, video featuring musical performances and audio featuring musical performances; digital recording media, namely, CDs, DVDs,
laser discs, video tapes, audio tapes, diskettes, computer disks, optical disks, optical recording disks, smart cards, magnetic data carriers, optical data carriers, USB devices and Solid State
Drives featuring music, videos in the field of {specify the subject matter of the video, e.g., “movies in the field of comedy”, “music
videos”}, audio in the field of {specify the subject matter of the audio, e.g., “music”, “podcasts in the field of current events”}, images, text
in the field of {specify the subject matter of the text, e.g., “science fiction novels”, “comic books”} and metadata; computer operating programs; computer
programs, recorded, for telecommunications, automation systems, and information technology for home, office and vehicle automation, namely, for controlling lighting systems, heating and cooling
systems, security systems, home appliances and electronic devices; computer software for operating and controlling building security systems and building access, computer software for operating and
controlling home and office electrical power systems comprising wireless and wired controllers; video recording software; computer software for monitoring and recording patient vital signs and
responding to emergencies; computer software for operating and controlling wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical
devices or systems, namely, thermostats and lighting systems; computer software for remotely monitoring environmental conditions and controlling devices within a building, facility grounds, or
designated spatial area; computer software, namely, computer programs for the transmission, reproduction, receiving, accessing, searching, indexing and retrieving of games, images, music, sounds,
text, movies, video and animations in the field of general entertainment and data, for general database management, for the management operation and testing of wireless communication devices, for
enabling and securing electronic transactions; computer software for operating cloud computing based applications; computer software for mobile data communication; computer software for controlling
the operation and execution of other computer programs and networks; computer software for connecting disparate computer systems, servers and storage devices; computer programs for accessing a global
computer network and interactive computer communications network; computer application software for management of data and electronic media transmission services via online global and local computer
networks, for management of electronic storage of file and document data across computer networks, for hosting and integrating web content and software applications for delivery from content delivery
networks, for replication of content and data across computer networks, for computer network management, namely, global traffic management, for website traffic monitoring analysis and reporting, for
digital rights management services to protect data and electronic media, for digital rights management services to manage compliance with licenses and restrictions, for data transmission
optimization, for managing the download of computer software to third party users, for obtaining and analyzing information about end-users for security of data transmission; downloadable computer
software and software for media content delivery; software for enabling, facilitating, improving and accelerating content delivery and computer network traffic management; downloadable software in
the nature of mobile applications for displaying online information; downloadable computer software for downloading and accessing electronically stored data; downloadable computer game programs via a
global computer network and wireless devices; downloadable electronically recorded data files featuring video recording software computer game programs; downloadable electronic publications in the
nature of periodicals, newsletters, magazines, advertisements, reports, marketing materials in the form of brochures and pamphlets in the field of telecommunications, home and
office connectivity solutions, automation systems, computing and data storage, processing and data security and information technology; electronic components for motor vehicles, namely, stereos,
speakers, amplifiers, batteries, electric locks, electric display panels, navigation systems, capacitors, connectors, filters, oscillators, relays, switches, transformers, resistors, semiconductors,
integrated circuits, rectifiers, and transistors; audio equipment for vehicles, namely, stereos, speakers, amplifiers and equalizers; apparatus for accessing the internet and telecommunications
systems, namely, computers, mobile and cellular phones, PC tablets, computer network routers, switches, and hubs,
network servers, and computer hardware, namely, serial ports, firewalls, and modems; computer software for medical apparatus and
instruments, namely, computer software for analyzing patient data, patient vital signs, patient diagnosis, and patient treatment; software for streaming audiovisual and multimedia content via the
internet and global communications networks; software for streaming audiovisual and multimedia content to mobile digital electronic devices; software for searching, organizing, and recommending
multimedia content; computer software, namely, software development tools for creating software and mobile applications; hardware for streaming audiovisual and multimedia content via the internet and
global communications networks, namely, digital media streaming devices, digital video recorders, DVD and high definition video disc players, home theater systems comprised of audio and video
receivers and high definition video disc players; televisions, television set-top boxes, dongles being {specify nature and purpose of the
dongles, e.g., “wireless network adaptors”, “computer hardware for preventing the unauthorized copying or use of computer software”} and broadband wireless network
adapters; multichannel video programming distribution devices, namely, {specify devices, e.g., “distribution amplifiers for audio and video signals”, “transmitters
for video signals for transmission over twisted pair cables”,} and applications, namely, {specify applications, e.g., “downloadable computer and mobile
device software applications for (indicate the purpose or function of the software, e.g., “for programming mobile phones to record movies”, “for streamlining movies to mobile phones”, and if content-
or field-specific, the content or field of use)”}
Class 35: Advertising services; merchandising services, namely, product
merchandising for others, sales promotion for others; sponsorship in the form of advertising, namely, sponsorship search; special event planning for commercial or advertising
purposes; arranging and conducting special events for commercial or advertising purposes; organization of exhibitions and events for commercial or advertising purposes; business management; business
administration; providing office functions; commercial business management and commercial corporate business management for third parties in particular in the areas of energy,
gas, water; collection, systematization, compilation and analysis of business data and information stored in computer data bases; retail store services and online retail store services featuring
machines for the household and commercial sector, namely, washing machines and dishwashers, washers for the industrial and the household sector, namely, washing machines and dishwashers, electric
kitchen machines, electric cleaning apparatus for household purposes, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking life-saving and
teaching apparatus and instruments, namely, {specify apparatus and instruments}, apparatus and instruments for conducting, switching, transforming,
accumulating, regulating and or controlling electricity, namely, {specify apparatus and
instruments}, apparatus for the recording, the transmission, the processing and the reproduction of sound, images or data, electrotechnical components, namely, {specify components}, electrotechnical equipment, namely, {specify equipment}, apparatus and instruments, namely, telecommunications
equipment and information technology equipment, namely, {specify equipment}, motor vehicle automation equipment, automation equipment
for buildings, security systems automation equipment, software for monitoring and controlling appliances, electric equipment, namely, {specify equipment},
apparatus and instruments for the transmitting of commands, namely, {specify apparatus and instruments}, magnetic data carriers, mechanisms for coin
operated apparatus, calculating machines, data processing equipment, computers, recorded and unrecorded data carriers, CDs, DVDs and other digital
recorded media, namely, {specify digital recorded media, e.g., “floppy disks”, “pre-recorded USB flash drives featuring {specify content}”}, recorded
computer programs, computer software, including downloadable computer game programs, downloadable electronic publications, electronic components for motor vehicles, computer software for medical
apparatus and instruments, medical apparatus and instruments, namely, {specify apparatus and instruments}, orthopedic articles, namely,
{specify articles}, apparatus for use in medical analysis, namely, {specify apparatus}, medical apparatus and instruments for
patient monitoring and displaying patient's vital signs, medical measuring apparatus and parts thereof, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating
and water supply, namely, {specify apparatus}, motor vehicles and parts thereof, printed matter, photographs, office requisites except furniture,
instructional and teaching material except apparatus, namely, {specify material and specify excepted apparatus}, games, including video games, apparatus for
games, software for streaming audiovisual and multimedia content via the internet and global communications networks, software for streaming audiovisual and multimedia content to mobile digital
electronic devices, software for searching, organizing, and recommending multimedia content, computer software, namely, software development tools for creating software and mobile applications,
hardware for streaming audiovisual and multimedia content via the internet and global communications networks, namely, digital media streaming devices, digital video recorders, DVD and high
definition video disc players, home theater systems comprised of audio and video receivers and disc players, televisions, television set-top boxes, dongles being {specify nature and purpose of the dongles, e.g., “wireless network adaptors”, “computer hardware for preventing the unauthorized copying or use of computer software”} and broadband wireless adapters, multichannel video programming distribution devices and applications; services provided by an e-commerce operator, namely, electronic processing of orders processing for others, administrative processing of delivery
orders and accountancy for electronic ordering systems; accountancy;, namely, providing office functions; sponsorship search
Class 37: Technical support concerning the use of communication equipment, namely, technical advice
on the repair and installation of telecommunications equipment
Class 38: Telecommunication services, namely, transmission of voice, audio, visual images and
data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks; providing telecommunication connectivity services for transfer of
images, messages, audio, visual, audiovisual and multimedia works; providing electronic telecommunication connections and network connectivity services, namely, providing
telecommunications connections to a global computer network; transfer of data by telecommunications; telecommunication services, namely, electronic transmission of data and documents via computer
terminals; providing multiple users with access to a global computer network; providing multiple-user access to interactive databases via web sites on a global computer network; providing
multiple-user access to global computer information networks for the transfer and dissemination of a wide range of information in the nature of data, communications, content, goods and services via a
global network and wireless communication apparatus; providing multiple-user access to global information networks for the transfer and dissemination of a wide range of information; teleconferencing
services and conferencing on the internet; providing access to telecommunication networks; transmission of voice, data, graphic, sound and video by means of broadband power line or wireless networks;
consulting in the field of telecommunication services; consulting in the field of telecommunication services, namely, consulting on transmission of voice, data, documents and
multimedia items via telecommunications networks in the areas of transportation connectivity, automation, security and energy efficiency; telecommunications consultation services
in the fields of telecommunications automation equipment for home, work, and travel; provision of technical support concerning the use of
communication equipment; provision of private and secure electronic communication in real time within a computer network; telecommunications, namely, personal communication services;
business telecommunications, namely, providing long distance telephone services, local telephone services and transmission of voice
by wireless networks telecommunications services; providing online chat rooms for social networking;
providing access to searchable databases for the transmission of news and information between internet users; telecommunication services, namely, electric, digital, cellular and wireless transmission
of voice, data, information, images, signals, and messages and transmission of voice, data, images, audio, video and information via telephone, television, computers, computer
terminals and global communication networks; providing telecommunications connections to a global communications network; electronic mail, voice mail and messaging services, namely, the recording and
storage and subsequent transmission of voice messages by telephone; audio and video teleconferencing; paging services; electronic transmission of email
services; transmission and broadcast of audio and video programming by satellite; providing access to computer information telecommunication
networks; providing electronic telecommunications connections to the internet and other computerized communications, data and
wireless networks; high-speed access services and wireless access services to the internet; telecommunications consultation in the field of data, voice and video communications networks; video and
audio teleconferencing via the internet;, asynchronous transfer mode (ATM) services, namely, the transmission of information by
electronic communications networks; integrated service digital network (ISDN) services;, voice over internet protocol
(VOIP) communications services;, virtual private network (VPN) services and;
private line services, namely, providing private and secure electronic communications over a private or public computer network; providing telecommunications gateway services
for data transfer; electronic data transmission packet services; worldwide switched voice, data, video and multimedia transmission services; providing
online facsimile transmission services; telecommunications services, namely, providing a gateway for connecting between independent telecommunications and
computer networks for sharing of internet traffic; voice mail services; telecommunications services, namely, providing toll free telephone numbers services and call routing services in the nature of call forwarding services; messaging center services in the nature of telephone voice messaging
services; video, audio and data telephone conferencing services; wireless telecommunications services, namely, the wireless transmission of voice and data; telecommunications
services, namely, providing voice over internet protocol services, providing network access point services for the exchange of internet traffic among internet traffic carriers; electronic messaging
services; providing a high speed access to area networks and a global computer information network; transfer of data by telecommunication; telecommunication access services; telephone
telecommunications services provided via prepaid telephone calling cards; telecommunication services, namely, providing advanced calling features, namely, providing the ability to record voice memos
after a telephone call by leaving a message that will be recorded separately and saved online as a file which can then be emailed, shared or kept private based on the user settings; telecommunication
services in the nature of providing telephone services with various telephone features, namely, a dedicated toll-free number, voicemail, multiple mailbox extensions, telephone message notification,
fax capabilities, detailed call reports, call waiting, call identification, call forwarding, and message waiting; telecommunication services, namely, providing electronic message alerts via the
internet notifying individuals of a changed status or condition of a sensing device in a security system; telecommunication services, namely, providing e-mail notification alerts via the internet
notifying vehicle owners of timing of vehicle maintenance; telecommunication services, namely, providing internet access via broadband optical or wireless networks; telecommunication services,
namely, providing access to pictures, video, alarm status, building plans and other building and security information at a remote station; news agency services for electronic transmission; press
agency services, namely, the transmission of news items and other data to news reporting organizations and news agency services for electronic transmission; rental of telecommunications equipment;
providing information on telecommunications; telecommunications services, namely, electric, digital, cellular and wireless transmission of voice, data, information, images, signals, messages and
transmission of voice, data, images, audio, video and information via telephone, television and global communication networks to allow users to enable value-added services in the use of fixed or
mobile networks in the nature of search services or information services; telecommunications consultation services for others, namely,
services relating to in the field of telecommunications automation systems and equipment, namely, used in the areas of home automation, workplace connectivity and integration, travel, transport and logistic solutions, public sector solutions, energy efficiency solutions, multimedia
distribution, health solutions, security systems, application performance management, consulting services, installation services, data hosting services, network connectivity services, and network
performance enhancement services, application operations and management services, web, social and mobility enabling services, and data management services; broadcasting, streaming, transmission and
delivery of audio-visual and multimedia content in the fields of news, entertainment, sports, comedy, drama, music, and music videos via a global computer network; webcasting services; providing
Internet access for users to access online forums for transmission of messages and transmission of blogs over the Internet; providing online electronic
bulletin boards for transmission of messages among users in the field of general interest; web messaging services; video-on demand transmission services; providing online forums for transmission of
messages featuring current event reporting, entertainment, sports, comedy, drama, music, and music videos; video-on-demand transmission services;
Internet protocol television (IPTV) transmission services; wireline telecommunications, namely, {specify services, e.g., “transmission of voice and data by means of
telephone lines”}; telecommunications services, namely, providing broadband voice and data services by means of {specify means, e.g., “telephone lines”, broadband optical or
wireless networks”}; providing information about broadband and information services including voice and data services; video
services, namely, transmission of multichannel video programs via {specify the medium, e.g., “cable television”, “wireless communication networks”, “the Internet}
Class 41: Education, namely, providing classes and seminars in the fields
of telecommunications, automation systems, and information technology; providing of training in the fields of telecommunications, automation systems, and information technology; entertainment,
namely, providing live musical, variety, news, and comedy performances via global telecommunications networks; entertainment services, namely, providing information to mobile
telecommunications devices in the fields of entertainment news, entertainment, movies, television, music, sports, celebrity personalities, current events and social commentary on entertainment;
ticket agency services for entertainment events; information about entertainment and entertainment events provided via online networks and internet; organizing community sporting and cultural
activities; entertainment services in the nature of conducting events in the fields of cultural, sporting, social and ecological entertainment events that are sponsored; providing information
relating to the organizing of educational, cultural, sporting or entertainment exhibitions; online services, namely, providing information on education and providing entertainment information;
non-downloadable electronic publications in the nature of instructional materials in the fields of telecommunications, automation systems, and information technology; providing online computer games;
online electronic publishing of books and journals; education and entertainment services, namely, providing information via a global computer network in the field of entertainment and
entertainment-related topics, namely, {specify the entertainment-related topics, e.g., “motion pictures”, “television shows”, “multimedia entertainment content”,
etc., but do not indicate advertising or commercials}; providing a website featuring non-downloadable audio, video and audiovisual content in the nature of recordings featuring movies, TV
shows, videos featuring {specify subject, e.g., “comedy”, “drama”} and music; entertainment services, namely, providing temporary use of non-downloadable
online video featuring {specify subject, e.g., “music performances”, “comedy performances”}; provision of non-downloadable videos
featuring programs on {specify subject, e.g., “music”, “comedy”} a wide variety of entertainment topics
via a video-on-demand service; wireline telecommunications; broadband and information services including voice and data services; video services
including, namely, providing on-line, non-downloadable multichannel video programming distribution featuring {specify videos, e.g., “motion pictures”, “television shows”}
Class 42: Scientific and technological services, namely, research and design in the fields of
telecommunications, automation systems, and information technology; industrial analysis and research services in the field of telecommunications, automation systems and information technology
to assure compliance with industry standards; design and development of computer hardware, software and software for data bases; maintenance of software; computer services in
connection with the nature of electronic data storage; rental of computers for data processing; design of web sites for others;
performance of chemical analysis and technical testing of chemicals; inspection of chemicals for quality control purposes and checks
related thereto; technical security services, namely, technical consultancy in the field of computer security; technical monitoring of industrial plants in the fields of energy, gas,
water to ensure proper functioning of the plants and technical quality monitoring of heat generation plants for quality control
purposes; engineering; providing online computer consultation, namely, providing online technological information about computer networks for the area of computer networking; consultancy relating to in the field of the design and development of computer software, computer database programs, and computer hardware architecture, including consultancy relating to computer database programs; technological services, namely, metering in
relation to telemetering, remote metering, meter reading systems and smart metering, namely, {specify nature of the services, e.g., “metering and monitoring
electric power consumption by third parties for electric power providers”}; telecommunications technology consultancy,; information
technology consulting services; technical support concerning the use of communication equipment, namely, troubleshooting of computer software problems within the equipment
Wording in bold indicates additions. Wording in bold, in
italics and struck through indicates deletions. Wording in bold, in italics, and {in brackets} indicates that applicant must provide additional information.
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden
or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP
§1402.06. Generally, any deleted goods and services may not later be reinserted. See 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.
AMENDED DESCRIPTION OF MARK REQUIRED
The description of the mark uses broad, vague language that does not accurately describe the
applied-for mark. Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as
any design elements in the mark. See 37 C.F.R. §2.37; TMEP §808.02.
Therefore, applicant must provide a more detailed description of the applied-for mark. The following is
suggested:
The mark consists of the stylized letter “T”, with two small squares on either side of the “T”. Two additional small squares are
positioned to the right of the “T” before the stylized wording “MOBILE”, with another small square immediately to the right of the wording “MOBILE”.
APPLICATION NOT SIGNED OR DATED
The application was unsigned, resulting in the application
not being properly verified. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1). Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §804.02.
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response Office action form, answer “yes” to the
TEAS response form wizard question #10, and follow the instructions within the form for signing. The TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. For more information about a signed declaration and
required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.
RESPONSE GUIDELINES
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. §§2.62(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.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office
action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS
response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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 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.
/Ray Harmon/
Trademark Examining Attorney
Law Office 103
(571) 272-0386
raymond.harmon@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.