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: 6/3/2019

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on May 17, 2019.  Refusal was initially made on the grounds that the applicant failed to provide the Office with an acceptable identification of goods/services.  The applicant’s response contains no amendments to the original unacceptable identification of goods/services.  Accordingly, the requirement for an acceptable identification of goods/services is now made FINAL for the reasons set forth below.  37 CFR §2.71(a); TMEP §§ 1402.06 et seq., 1402.07; C.F.R. §2.64(a).

 

IDENTIFICATION OF GOODS AND SERVICES

The wording of the identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Furthermore, the wording identifies goods and services in several different international classes.  Accordingly, the applicant may substitute the following wording, if accurate.  Please note, the suggested amended wording and/or information for creating an acceptable identification appears in bold font.

 

Motion picture films about children's entertainment, action, adventure, comedy, drama, horror, science fiction, documentary, historical, fantasy, crime, musical and dance, westerns, animation and cartoon, non-fiction, mystery, political, romance and thriller; Cinematographic films featuring children's entertainment, action, adventure, comedy, drama, horror, science fiction, documentary, historical, fantasy, crime, musical and dance, westerns, animation and cartoon, non-fiction, mystery, political, romance and thriller; Downloadable films and television programs featuring children's entertainment, action, adventure, comedy, drama, horror, science fiction, documentary, historical, fantasy, crime, musical and dance, westerns, animation and cartoon, non-fiction, mystery, political, romance and thriller provided via a video-on-demand service; Downloadable video recordings featuring children's entertainment, action, adventure, comedy, drama, horror, science fiction, documentary, historical, fantasy, crime, musical and dance, westerns, animation and cartoon, non-fiction, mystery, political, romance and thriller; Video recordings featuring children's entertainment, action, adventure, comedy, drama, horror, science fiction, documentary, historical, fantasy, crime, musical and dance, westerns, animation and cartoon, non-fiction, mystery, political, romance and thriller; Virtual reality software used to access, receive and send digital content to a define geographical location which can be triggered or prompted by a physical object; Downloadable virtual reality software used to access, receive and send digital content to a define geographical location which can be triggered or prompted by a physical object; VPN (virtual private network) operating software; Computer software used to process and distribute multimedia content in a virtual reality environment; Downloadable computer software used to process and distribute multimedia content in a virtual reality environment;  Computer software for the data basing, visualization, manipulation, virtual reality immersion and integration of geographic information with on-line member communities; Computer software for crowd-sourcing by enabling users to upload, view, download, discuss and vote artists' content and creative projects; Downloadable computer software for crowd-sourcing by enabling users to upload, view, download, discuss and vote artists' content and creative projects;  Computer software for crowd sourcing questions, ideas and content to users and for users to cast votes, rank and provide opinions as to artists' projects and creative content via a global computer network; Downloadable computer software for crowd sourcing questions, ideas and content to users and for users to cast votes, rank and provide opinions as to artists' projects and creative content via a global computer network; Computer software used to access, organize, manage, analyze users' talent evaluations and assessments of artists' materials, projects, creative material and entertainment projects through using crowd sourcing and open sourcing methods via online communities and networks where one may be compensated through monetary payment including crypto-currency; Downloadable computer software used to access, organize, manage, analyze users' talent evaluations and assessments of artists' materials, projects, creative material and entertainment projects through using crowd sourcing and open sourcing methods via online communities and networks where one may be compensated through monetary payment including crypto-currency (International Class 9)

 

Production of advertising matter and commercials; Distribution of advertising matter and commercials; Evaluations relating to commercial matters in the fields of artists' materials, projects and creative content; Marketing services; Event planning and management for marketing, branding, promoting or advertising the goods and services of others; Special event planning for business purposes; Special event planning for commercial, promotional or advertising purposes; Advertising services, namely, production of special effects including model-making services, computer-generated imagery and computer-generated graphics for the production of commercials; Business management in the film, movie and television industries;  (International Class 35)

 

Fiscal assessments in the fields of artists' materials, projects and creative content (International Class 36)

 

Video broadcasting; Audio broadcasting; Television broadcasting; Wireless broadcasting; Internet broadcasting; Broadcasting services, namely, transmission of advertising programs and media advertising communications via digital communications networks; Video broadcasting and transmission services via the Internet, featuring films and movies; Video streaming services via the Internet, featuring films and movies; Broadcasting services and provision of telecommunication access to films and television programs provided via a video-on-demand service; Streaming of data; Streaming of audio and video material on the Internet; Electronic transmission and streaming of digital media content for others via global and local computer networks;  (International Class 38)

           

Entertainment services, namely, providing on-line, non-downloadable virtual digital audio, visual and audio-visual content distributed to specified geographic user or provider locations for use in virtual environments initiated by connection or communication with a physical object; Production and distribution of videos, film, television shows and movies in the field of {specify subject matter, e.g., education, fashion, etc.}; Production of video and computer game software; Production of music; Entertainment services, namely, the development, creation, production, distribution, and post-production of motion pictures, television shows, multimedia entertainment content, film and videos; Recording studios; Film studios; Movie studios; Rental of film production studios; Computer software design and development; Virtual reality game services provided on-line from a computer network; Virtual reality game software; Arranging and conducting of concerts; Provision of information relating to live performances, road shows, live stage events, theatrical performances, live music concerts and audience participation in such events; Provision of information relating to live performances, road shows, live stage events, theatrical performances, live music concerts and audience participation in such events; Direction of making television programs, films, motion pictures or movie screenplays; Technical direction of making television programs, films, motion pictures; Scriptwriting of television programs, films, motion pictures or movies for non-advertising purposes; Multimedia entertainment services in the nature of development, pre-production, production and post-production services in the fields of video, music and films; Entertainment services in the nature of development, creation, pre-production, production and post-production services of multimedia entertainment content; Entertainment services in the nature of development, creation, pre-production, production, distribution, and post-production of motion pictures, television shows, multimedia entertainment content; Post-production editing services in the field of music, videos and film; Film editing; Rental of films, cinema films, motion picture films; Television, video and movie filming services; Rental of film production studios for motion picture films, animated films, videos and television programs; Special event planning for social entertainment purposes; Theatrical lighting design services; Entertainment, namely, lighting production; Production of movie special effects; Entertainment services, namely, production of special effects including model-making services, computer-generated imagery and computer-generated graphics for the production of motion pictures, videos, and movie trailers; Special effects animation services for film, television and video; Production of sound and visual effects for film, movies, videos, television and for internet web sites; Operation of robotic cameras, video equipment and/or audio equipment for production of internet teleconferencing, teleconferencing or television programs; Entertainment services in the nature of creation and development of original content for film, television, streaming, gaming, theatrical and live performance; Screenplay writing; Teleplay writing; On-line journals, namely, blogs featuring entertainment and information and commentary on the movies, films and videos and the industries related thereto; Providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of entertainment and information and commentary on the movies, films and videos and the industries related thereto  (International Class 41)

 

Providing non-downloadable virtual reality software used to access, receive and send digital content to a define geographical location which can be triggered or prompted by a physical object; Providing customer-defined generated content and content of others automatically selected and customized based on the known or estimated geographical location of an Internet, mobile telephone or other wired or wireless digital network based customer; Providing non-downloadable computer software used to process and distribute multimedia content in a virtual reality environment; Providing customer-defined generated content and content of others automatically selected and customized based on the known or estimated geographical location of an Internet, mobile telephone or other wired or wireless digital network based customer; Providing non-downloadable computer software for crowd-sourcing by enabling users to upload, view, download, discuss and vote artists' content and creative projects; Providing non-downloadable computer software for crowd sourcing questions, ideas and content to users and for users to cast votes, rank and provide opinions as to artists' projects and creative content via a global computer network; Providing non-downloadable computer software used to access, organize, manage, analyze users' talent evaluations and assessments of artists' materials, projects, creative material and entertainment projects through using crowd sourcing and open sourcing methods via online communities and networks where one may be compensated through monetary payment including crypto-currency; Special effects design for others; Providing customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites;  (International Class 42)

 

Licensing of intellectual property; Licensing of intellectual property in the nature of screenplays, teleplays, music, fine art, painting and sculpting and multi-media works;  (International Class 45)

 

The applicant should note that the above suggested identification of goods and services is acceptable as written.  Any alteration may render it unacceptable.  Accordingly, if the applicant wishes to amend the goods and services differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

Please further note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP § 1402.06.  Therefore, the applicant may not amend to include any goods and services that are not within the scope of goods and services set forth in the original identification.

 

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.

 

CLASSIFICATION

Some of the goods and services are classified incorrectly.  The applicant must classify the goods and services as specified above.  Proper classification of goods and services and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

MULTI-CLASS APPLICATION

The application identifies goods services that are classified in at least seven classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

Applicant must list the goods and/or services by international class.  TMEP §§801.01(b), 1403.01.

 

FINAL REFUSAL

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 resolves all outstanding refusals; and/or

 

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

 

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

 

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

 

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

 

 

 

/Geoffrey Fosdick/

Trademark Attorney

Law Office 111

U.S. Patent & Trademark Office

571 272 9161

geoffrey.fosdick@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 6/3/2019 FOR U.S. APPLICATION SERIAL NO. 88063122

 

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 6/3/2019 (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.