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: 4/30/2019

 

 

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.  

 

This Office action is in response to applicant’s communication filed on April 4, 2019.

The following requirements have been satisfied:  definite identification of services in Class 38; copy of foreign registration submitted.  See TMEP §§713.02, 714.04. 

IDENTIFICATION OF SERVICES REQUIRES CLARIFICATION – CLASS 38

In the first Office action, the examining attorney required applicant to amend particular wording in the identification of services in Class 38.  The applicant complied with this requirement, and the amendments are accepted and made of record.  However, applicant is advised of the following additional requirement:

The wording “computer network communications” in the identification of services is indefinite and must be clarified because applicant must specify more information about the nature of the communication services.  E.g. “providing private and secure real time electronic communication over a computer network”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “computer network communication services, namely, providing private and secure real time electronic communication over a computer network”.

IDENTIFICATION OF SERVICES INDEFINITE – CLASS 41

In the first Office action, the examining attorney omitted the requirement to amend the identification of services in Class 41.  Therefore, applicant is advised of the following new issue:

The wording “education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars” is unacceptable as indefinite.  Applicant must specify the nature of the education.  E.g. “providing tutorial sessions in the field of {INDICATE subject matter or field”.  Applicant must specify the fields of the training, courses, conferences, exhibitions, events and seminars.  For example, “business conferences” are classified in Class 35, while “educational conferences” are classified in Class 41.  With regard to “exhibitions”, exhibitions in the fields of advertising, business are classified in Class 35 and cultural, sporting or educational exhibitions are classified in Class 41.

The wording “entertainment” and “entertainment services provided via a website” in the identification of services is indefinite and must be clarified.  The wording is too broad because applicant has not specified the exact nature of the entertainment.   E.g. “entertainment, namely, live music concerts”, etc.. 

The wording “organisation of competitions and awards; arranging and conducting competitions”; “arranging and conducting competitions” is unacceptable as indefinite.  Applicant must specify the nature of the competitions.  E.g. “sports competitions”, etc.   Applicant must specify the nature of the awards.  E.g.  “providing recognitions and incentives by the way of awards to demonstrate excellence in the field of {INDICATE field or activity}.

The wording “arranging and conducting award ceremonies” is indefinite.  Applicant must specify the field/subject matter of the awards.  E.g “to provide recognition and incentives to demonstrate excellence in the field of {SPECIFY field}”.

The wording “presentation of awards for achievement” is indefinite.  Applicant must specify the field/subject matter of the awards.  E.g “in the field of {SPECIFY field.  E.g. music}”.

The wording “provision of information relating to education, entertainment, sporting and cultural activities for accessing via communication and computer networks production services” in indefinite.  Applicant may amend to “provision of information relating to the organization of educational, entertainment, sporting and cultural exhibitions via communication and computer networks”.

The wording “organising, conducting, production of shows, events, displays, and parties” is indefinite.  Applicant must specify the nature of the events, displays and parties.  E.g. “birthday parties”; “advertising displays” in Class 35; “cultural events” in Class 41; “television shows” in Class 41, etc.

The wording “television entertainment services” is indefinite.  Applicant must specify the field.  E.g. news, comedy, variety, etc.

The wording “publishing services” is indefinite.  Applicant must specify what is being published.  E.g. “music publishing services”.

The wording “publication of printed matter, periodical publications, printed publications, books and magazines” is indefinite.  Applicant must specify the type of the “printed matter” and “printed publications” (e.g. books) as well as the subject matter/field of all items.

The wording “publication of material which can be accessed from databases or from the Internet” is unacceptable.  Applicant must specify the nature of the material as well as the subject matter/field.

The wording “radio entertainment” and “radio entertainment services provided via a website” is unacceptable as indefinite.  Applicant must specify the subject matter.

The wording “provision of music entertainment” is unacceptable as indefinite.  Is applicant providing music broadcasting or non-downloadable music.  E.g. “provision of music entertainment in broadcast form, namely, live musical performances via television and radio.

The wording “provision of music and music entertainment for accessing by means of software applications” is unacceptable as indefinite.  The provision of downloadable music is classified in Class 9;  The provision of online music, not downloadable is classified in Class 41.

The wording “provision of radio entertainment services for accessing by means of software applications” and “provision of competitions for accessing by means of software applications” is unacceptable as indefinite.  Applicant must specify that the radio entertainment and competitions are not downloadable, and specify the field of the competitions.  E.g. “sports competitions”.

The wording “television programming” is unacceptable as indefinite.  Applicant must specify the nature of the programming.  E.g. providing an ongoing television program in the field of comedy”, etc.

The wording “provision of radio broadcasts for accessing by means of software applications” is unacceptable.  Radio broadcasting services are classified in Class 38.  Applicant currently has identified such services in existing Class 38.  In the alternative, applicant may amend to read, “entertainment, namely, a continuing {INDICATE type.  E.g. variety, news, comedy}show broadcast over internet radio”

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may amend the identification as follows, if accurate: 

CLASS 41:  Entertainment, namely, {SPECIFY exact services}; entertainment services provided via a website namely, {SPECIFY exact services}; organisation of competitions {SPECIFY the type of competition} and awards, namely, providing recognitions and incentives by the way of awards to demonstrate excellence in the field of {INDICATE field or activity}; arranging and conducting competitions {SPECIFY the type of competition}; arranging and conducting award ceremonies to provide recognition and incentives to demonstrate excellence in the field of {SPECIFY field}; presentation of awards for achievement in the field of {SPECIFY field.  E.g. music, comedy, etc.;}; education and training services, namely, {INDICATE the exact type of education as well as the subject matter/field for the education and training}; arranging and conducting courses, conferences, exhibitions, events and seminars in the field{s} of {        SPECIFY the purpose/subject matter.  Advertising and business purposes are classified in Class 35 and educational or cultural purposes are classified in Class 41};  organising, conducting, production of shows, events, displays, and parties {SPECIFY the exact nature of the shows, events, displays and parties};  organisation and production of music events; organisation and production of live music concerts; organisation of events for cultural, entertainment and sporting purposes; organisation of sporting competitions and sports events; ticket and event booking services; concert ticket reservation services; television entertainment services, namely, {SPECIFY the nature of the entertainment.  E.g. news shows}; production and distribution of television programmes in the field of {SPECIFY field.  E.g. news, comedy, variety; radio entertainment services in the field of {SPECIFY field} ; production and distribution of radio programmes and radio programming; interactive information relating to education, entertainment, sporting and cultural activities provided on-line from computer databases or the Internet; provision of information relating to the organization of educational, entertainment, sporting and cultural exhibitions via communication and computer networks; {SPECIFY what is being published} publishing services; publication of printed matter {SPECIFY type of printed matter}, periodical publications, printed publications {SPECIFY type of printed matter , books and magazines in the field of {specify the field{s}.  E.g. dance, movies, music, etc.}; publication of printed matter;  publication of material which can be accessed from databases or from the Internet, namely, {SPECIFY the nature of the material.  E.g. magazines and the subject matter}; radio entertainment services in the field of {SPECIFY field} provided via a website; providing a website featuring information relating to entertainment, sporting and cultural activities; provision of music entertainment in broadcast form, namely, live musical performances via television and radio; provision of non-downloadable music and music entertainment; provision of radio broadcasts, namely, a continuing {INDICATE type.  E.g. variety, news, comedy}show broadcast over internet radio”; providing non-downloadable radio entertainment services in the field of {SPECIFY field.  E.g. comedy}; providing non-downloadable access to {SPECIFY the type of competitions} competitions; television programming, namely, {SPECIFY the subject matter.  E.g. an ongoing reality based television program}; information, advice and consultancy in relation to the foregoing

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.

 

Scope advisory

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or services may not later be reinserted.  See TMEP §1402.07(e).

 

The examining attorney apologizes for any inconvenience.

 

 

 

/Carolyn A. Pendleton/

Trademark Examining Attorney

Law Office 103

571-272-9207

carolyn.pendleton@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 4/30/2019 FOR U.S. APPLICATION SERIAL NO. 88114530

 

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 4/30/2019 (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.