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: 4/5/2019

 

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to Applicant’s communication filed on March 11, 2019.

 

In a previous Office action dated September 11, 2018, Applicant was required to satisfy the following requirements:  Amend the identification of services; Clarify the number of classes for which registration is sought.

 

The Trademark Examining Attorney MAINTAINS and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that Applicant must address:

 

·       Amended Identification of Services Required

·       Clarification of Number of Classes Required – Multiple Class Application Requirements

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of services as set forth in the suggested amendments below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. 

 

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 activities identified as “retail services” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. 

 

If Applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, Applicant should amend the identification to specify the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets).  See TMEP §§1301.01(a)(ii), 1402.11. 

 

Also, the wording “television programs” appearing several times in the identification of services in Class 41 is indefinite and must be clarified because it either does not specify the subject matter of the television programs or appears in an incongruous manner, e.g., "providing films featuring television programs".  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may refer to the suggested amendments below for guidance on how to clarify these entries.

 

Moreover, the identification for “electronic publications” in International Class 41 is too broad and must be clarified because the wording does not make clear the nature of the publications and could identify publications in International Classes 9 and 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x).  Applicant must amend this identification to clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.

 

Additional portions of the wording in the identification of services are unacceptable because they contain over-broad and indefinite language and, thus, these services may encompass more than one international class and the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The USPTO requires applicants to identify goods and services with specificity in order to provide public notice, to enable the USPTO to classify the goods and services properly, and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).  The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and services covered by the mark.   In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007). Applicant may refer to the suggested amended identification of goods and services below.

 

Overall Identification

 

Applicant may adopt the following form of identification, if accurate:

 

Class 9 – Downloadable electronic publications, namely, electronic magazine, newsletter and brochures in the field of entertainment

 

Class 35 – Distribution for others in the field of blank optical discs and pre-recorded optical discs featuring sound, video and data, namely, fulfilling and processing orders received from customers,; order fulfillment services including receiving and putaway processing,; inventory management in the nature of operating a distribution center or warehousing facility containing distribution inventory; and inventory management, shipping and transportation management, namely, shipment processing, and preparing shipping documents and invoices for business purposes,; arranging the transportation of goods for others,; providing transportation documents for others,; transportation logistics management in the field of blank optical discs, and pre-recorded optical discs featuring sound, video and data; providing customer service management for others,; invoicing,; and return management in the nature of management and processing of returned blank optical discs and pre-recorded optical discs featuring sound, video and data; business consultancy services via the internet; retail services and wholesale store services featuring optical discs

 

Class 38 is acceptable as written.

 

Class 39 is acceptable as written.

 

Class 41 – Audio mastering; film mastering services; record mastering; video mastering services; video and audio mastering of optical discs; production of master optical discs recorded with music and video; providing non-downloadable entertainment content in the nature of audiovisual works, namely, motion pictures, movie trailers, television programs featuring {indicate subject matter, e.g., comedy, news}, music, and games by means of an interactive global computer and communications networks; entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; providing on-line videos, not downloadable, featuring audio-visual works, namely, movies, television programming featuring {indicate subject matter, e.g., comedy, news}, music and games; providing on-line videos featuring motion pictures, movies, and television programs in the fields of action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns, not downloadable; providing films and television programs featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns, not downloadable, via video-on-demand transmission services; providing on-line music, not downloadable; entertainment services, namely, an ongoing multimedia program and television program featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns distributed via various platforms across multiple forms of transmission media; entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media; digital video, audio, and multimedia publishing services; multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; providing non-downloadable electronic publications, namely, electronic magazine, newsletter and brochures in the field of entertainment; providing on-line computer games

 

Note: If Applicant adds one or more classes to the application, then Applicant must comply with the Multiple Class Application Requirements set forth in this Office action.

 

Scope Advisory

 

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).

 

ID Manual Online

 

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. Applicant is strongly encouraged to consult the ID Manual.

 

CLARIFICATION OF NUMBER OF CLASSES REQUIRED –

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least five classes; however, Applicant submitted fess sufficient for only four classes.  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.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

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

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, Applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

ASSISTANCE

 

Please call or email the assigned Trademark Examining Attorney with questions about this Office action.  Although the Trademark Examining Attorney cannot provide legal advice or statements about Applicant’s rights, the Trademark Examining Attorney can provide Applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an Examiner’s Amendment by telephone or e-mail without incurring this additional fee.  

 

/Samantha Sherman/

Examining Attorney

Law Office 123

(571) 270-0903

Samantha.Sherman@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned Trademark Examining Attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that Applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/5/2019 FOR U.S. APPLICATION SERIAL NO. 88053809

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/5/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.