UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/2/2019

 

 

THIS IS A FINAL ACTION.

 

 

This Office action is in response to applicant’s communication filed on March 26, 2019.

 

The applicant has 1) proposed an amendment to the identification of goods and services and 2) submitted a copy of the foreign registration.  No. 2 is acceptable.

.

The trademark examining attorney notes that the following requirement(s) have been satisfied: submitted a copy of the foreign registration.  See TMEP §§713.02, 714.04. 

 

The proposed amendment to the identification of goods and services is unacceptable.  Accordingly, the following requirements are now made FINAL:  the requirement to amend the identification of goods and services.  See 37 C.F.R. §2.63(b).

 

 

FINAL - IDENTIFICATION OF GOODS AND SERVICES – Limited to Classes 9, 16, 40 and 42

 

The identification of goods and services remains indefinite and must be clarified because several of the entries need further specificity as noted below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Applicant must also amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  Please note this final requirement is limited to the goods and services highlighted in Classes 9, 16, 40 and 42 only.

 

Applicant must re-enter the limiting language “printing house supplies” in Class 16.

 

Applicant may adopt the following wording, if accurate: 

 

            Class 9

Information technology products, namely, __________ display ___________ [applicant must specify the type of displays, e.g., digital signage display panels, liquid crystal display (LCD) monitors] and __________ screens [applicant must specify the type of screens, e.g., LCD large-screen displays]; software for end users to design fonts and software for development of fonts; parts and accessories for all aforementioned goods, namely, downloadable computer software in the nature of software extensions and plugins for __________ [applicant must specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use], in International Class 9.

 

Class 16

Printing house supplies, namely, paper, printing fonts and ___________ [applicant must specify the goods intended by the wording “Typeface Font Software fonts” using common commercial terms], __________ [applicant must specify what type of pencils are intended by the wording “Typographic pencils” using common commercial terms], ___________ brushes [applicant must specify the type of brushes, e.g., drawing brushes, artists’ brushes] and stencils to draw type, paper and cardboard; paper models for art, namely, architectural models; paper and paper supplies for use in painting, drawing and paper sculpture, namely, ____________ [applicant must specify the type of paper and paper supplies are intended by the wording “calligraphy and type writing tools” using common commercial terms.  “Calligraphy and type writing tools” is overly broad and must be further specified as this wording could include goods that are not paper goods] and instruction manuals to write, draw and type; paper and writing materials for teachers and instructors, namely, ____________ [applicant must specify the type of paper and writing materials are intended by the wording “calligraphy and type writing tools” using common commercial terms.   “Calligraphy and type writing tools” is overly broad and must be further specified] and instruction manuals to write, draw, and type, in International Class 16.

 

Class 40

Manufacturing of typesetting supplies for print shops; development of film in the field of photography and cinematography; duplication of audio and video recordings; __________ [applicant must clarify the services intended by the wording “distribution, renting and leasing of Printing Fonts and Typeface Font Software to the end user / Digital files of printing fonts and typeface font software in the field of printing, cinematography and photography” using common commercial terms.  For example, rental of computer software in the field of fonts is acceptable in Class 42]; consultation services in the field of printing, cinematography and photography, in International Class 40.

 

Class 41

Educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services, namely, holding seminars and workshops in the field of printing and graphic design, in International Class 41.

 

Class 42

Design and development of printing fonts for use in printing and on computer interfaces; IT-services, namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control in print shops; graphic design services; __________ [applicant must specify the services intended by the wording “Streaming and on-Demand delivery of Printing Fonts and Typeface Font Software to the end user; Font Software Renting Services” using common commercial terms.  Please note that downloadable printing fonts and printing fonts that can be downloaded provided by means of electronic transmission are both found in Class 9, not Class 42.  Rental of computer software in the field of fonts is acceptable in Class 42]; Product development of typesetting supplies for print shops, in International Class 42.

 

 

TMEP §1402.01.

 

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’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Accordingly, the requirement to amend the identification of goods and services is maintained and made FINAL.

 

 

FAILURE TO RESPOND – PARTIAL ABANDONMENT ADVISORY

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods and/or services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: Information technology products, namely, Displays and Screens; parts and accessories for all aforementioned goods, namely, Software Extensions and Plugins” in Class 9; “paper, Printing Fonts and Typeface Font Software fonts, Typographic pencils, brushes and stencils to draw type, paper and cardboard; paper and paper supplies for use in painting, drawing and paper sculpture, namely, Calligraphy and type writing tools and instruction manuals to write and draw type; paper and writing materials for teachers and instructors, namely, Calligraphy and type writing tools and instruction manuals to write and draw type,” in Class 16; “distribution, renting and leasing of Printing Fonts and Typeface Font Software to the end user / Digital files of printing fonts and typeface font software in the field of printing, cinematography and photography” in Class 40; and “graphic design services Streaming and on-Demand delivery of Printing Fonts and Typeface Font Software to the end user; Font Software Renting Services” in Class 42.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and/or services:  “Software for end users to design fonts and software for development of fonts” in Class 9; “paper models for art, namely, architectural models” in Class 16; “Manufacturing of typesetting supplies for print shops; development of film in the field of photography and cinematography; duplication of audio and video recordings; consultation services in the field of printing, cinematography and photography” in Class 40;  “Educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services, namely, holding seminars and workshops in the field of printing and graphic design” in Class 41; and “Design and development of printing fonts for use in printing and on computer interfaces; IT-services, namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control in print shops; Product development of typesetting supplies for print shops” in Class 42. 

 

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).

 

 

 

 

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 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).

 

 

 

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 refusal(s) and/or requirement(s) 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.  

 

 

 

Meier, Sharon

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

571-273-9112 - fax

sharon.meier1@uspto.gov

 

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

 

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

 

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

 

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

 

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

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/2/2019 FOR U.S. APPLICATION SERIAL NO. 88096933

 

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 5/2/2019 (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.