To: | AdMe Trademarks Ltd (nwells@legendslaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88099406 - 5618.205 |
Sent: | 9/24/2018 5:25:40 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88099406
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: AdMe Trademarks Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 9/24/2018
The referenced application has been reviewed by the assigned trademark examining attorney.
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).
On September 20, 2018, the trademark examining attorney and Nicholas Wells discussed the issue below. Applicant must timely respond to this issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
IDENTIFICATIONS REQUIRE AMENDMENT
Applicant must amend the International Class 9, 35, and 41 identifications for the reasons indicated below. See generally 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In International Class 9:
In International Class 35:
In International Class 41:
The following are the suggested formats for the amended identifications:
Class 9: Electronic notice boards; computer game software; electronic publications, downloadable, in the nature of {indicate form, e.g., magazines, newsletters, journals} in the field of {indicate subject matter, e.g., video games, children’s entertainment}; computer software applications, downloadable, for {indicate function or purpose, e.g., playing games}; downloadable image files containing {indicate content or subject matter, e.g., cartoon characters}; downloadable music files; compact discs featuring {indicate subject matter, e.g., music}
Class 35: On-line advertising on a computer network; rental of advertising space; demonstration of goods; business management of performing artists; organization of exhibitions for commercial or advertising purposes; design of advertising materials; promoting the goods of others on communication media, for retail purposes; sales promotion for others; production of advertising films; distribution of samples; dissemination of advertising matter; public relations; writing of publicity texts
Class 41: Videotaping; movie studio services; layout services, other than for advertising purposes; microfilming; videotape editing; production of radio and
television programmes; screenplay writing; game services provided on-line from a computer network; providing on-line electronic publications, not downloadable, in the nature of {indicate form,
e.g., magazines, newsletters, journals} in the field of {indicate subject matter, e.g., video games, children’s entertainment}; arranging and conducting of workshops in the field of
{indicate subject matter}; organization of {indicate type, e.g., electronic game} competitions; providing on-line videos, not downloadable, featuring {indicate subject
matter, e.g., animation, children’s entertainment}; providing on-line music, not downloadable; providing television programs, not downloadable, via video-on-demand services; film production,
other than advertising films; electronic desktop publishing; publication of texts, other than publicity texts; on-line publication of electronic books and journals; writing of {indicate
specific Class 41 “texts,” e.g., poems}; providing on-line videos, not downloadable; providing on-line music, not downloadable;
photography; photographic reporting
Class 42: Animation and special effects design for others; animation design for others; computer programming of computer animations; writing of texts, namely, technical writing
Class 45: Writing of texts, namely, personal letter writing
Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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. See TMEP §1402.06(a)-(b). The scope of the goods and services sets the outer limit for any changes to the identifications and is generally determined by the ordinary meaning of the wording in the identifications. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies services that are classified in at least five classes; however, applicant submitted fees sufficient for only four classes. Therefore, in response to the requirement that applicant amend the identifications, applicant must either (1) restrict the amended identifications to four classes (i.e., the number of classes covered by the fees already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(a) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).
(b) Submit a filing fee for each international class not covered by the fees already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 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.
To avoid abandonment of this application, applicant must explicitly address the requirement raised in this Office action by setting forth in writing the required changes. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
/Andrew Leaser/
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response using the “Response to Examining Attorney Office Action” form. 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. All informal 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.