To: | Dinamo GmbH (trademarks@patentusa.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88100343 - WHYTE - T-11016 |
Sent: | 5/2/2019 12:18:48 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88100343
MARK: WHYTE
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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: Dinamo GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 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.
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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
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 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.
Accordingly, the requirement to amend the identification of goods and services is maintained and made FINAL.
FAILURE TO RESPOND – PARTIAL ABANDONMENT ADVISORY
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; 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
(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.
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.