Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  November 26, 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 October 30, 2019, in which applicant stated as follows “Applicant respectfully requests reconsideration of the Examining Attorney's objections to publish the subject mark, and requests that the Examining Attorney allow Applicant's mark to publish”. 

Applicant has not complied with the requirement to amend the identifications of services in Classes 38 and 41 raised in the subsequent Office action dated April 30, 2019.

Therefore, the following requirements are now made FINAL:  requirement to amend the identifications of services in Classes 38 and 41.  See 37 C.F.R. §2.63(b).

IDENTIFICATION OF SERVICES REQUIRES CLARIFICATION – CLASS 38

In the Office action dated April 30, 2019, the examining attorney noted that 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 Office action dated April 30, 2019, the examining attorney noted that she had omitted the requirement to amend the identification of services in Class 41 in the first Office action as follows:

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).

FAILURE TO TIMELY RESOLVE THE OUTSTANDING ISSUES WILL RESULT IN A PARTIAL ABANDONMENT OF THE APPLICATION. 

 

The following services will be held abandoned and deleted from the application: 

 

• “computer network communications”
• “entertainment”
• “entertainment services provided via a website”
• “organisation of competitions and awards”
• “arranging and conducting competitions”
• “arranging and conducting competitions”
• “arranging and conducting award ceremonies”
• “presentation of awards for achievement”
• “provision of information relating to education, entertainment, sporting and cultural activities for accessing via communication and computer networks production services”
• “organising, conducting, production of shows, events, displays, and parties”
• “television entertainment services”
• “publishing services”
• “publication of printed matter, periodical publications, printed publications, books and magazines”
• “publication of material which can be accessed from databases or from the Internet”
• “radio entertainment”
• “radio entertainment services provided via a website”
• “provision of music entertainment”
• “provision of music and music entertainment for accessing by means of software applications”
• “provision of radio entertainment services for accessing by means of software applications”
• “provision of competitions for accessing by means of software applications”
• “television programming”
• “provision of radio broadcasts for accessing by means of software applications”

 

See 37 C.F.R. §2.65(a); TMEP §§715.03(a)(ii)(C), 718.02(a).

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Carolyn A. Pendleton/

Examining Attorney

Law Office 103

Phone:  571-272-9207

carolyn.pendleton@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 26, 2019 for

U.S. Trademark Application Serial No. 88114530

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Carolyn A. Pendleton/

Examining Attorney

Law Office 103

Phone:  571-272-9207

carolyn.pendleton@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 26, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”