To: | Pocketwatch, Inc. (ipprosecution@orrick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88120311 - POCKET.WATCH - 34955.6003 |
Sent: | 4/8/2019 7:11:53 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88120311
MARK: POCKET.WATCH
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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: Pocketwatch, Inc.
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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: 4/8/2019
This Office action is in response to applicant’s communication filed on March 22, 2019.
In a previous Office action dated January 29, 2019, the applicant was required to satisfy the following requirements: Amend the identification and classification of goods.
Further, the trademark examining attorney maintains and now makes the requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
IDENTIFICATION AND CLASSIFICATION OF GOODS
The wording “Controllers” in the identification of goods is indefinite and must be clarified because the device being controlled must be specified. Id.
Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may substitute the following wording, if accurate (suggested changes in bold):
Class 009: Downloadable software for streaming audiovisual and multimedia content via the Internet and global communications networks; Downloadable computer software, namely, software for streaming audio-visual and multimedia content via digital video playback devices, specifically digital video recorders, digital televisions, television set-top boxes, desktop and laptop computers, mobile electronic devices, and via the Internet; Downloadable computer software, namely, software for publishing and sharing digital media and information via global computer and communication networks; Downloadable software for uploading, showing, displaying, sharing, and viewing audio, video and multimedia digital content via the Internet and global communications networks; Downloadable electronic books in the field of entertainment and education books for children, story books, children's books, fiction books, interactive education books; Audio books in the field of field of entertainment and education books for children, story books, children's books, fiction books, interactive education books; Fridge Magnets; Decorative magnets; Sunglasses; 3D audio speakers; Wireless audio speakers; Earbuds; External computer hard drives; Headphones; Computer keyboards; Laptop carrying cases; Laptop sleeves; Portable USB battery Chargers; Audio speakers; Computer novelty items, namely, internal cooling fans, lights for use with computer cameras; Blank USB flash drives, blank computer hard drives; Battery Charging Stands; Remote Controls for {specify class 009 device e.g. television, projectors, etc.}; Headsets for telephones
Class 028: Gaming Keyboards; Gaming mouse
See TMEP §§1402.01, 1402.03
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.
MULTIPLE-CLASS APPLICATION ADVISORY
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§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.
RESPONSE GUIDELINES
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.
/Jason R. Nehmer/
Examining Attorney
Law Office 121
(571) 270-5303
jason.nehmer@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.