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: 2/6/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Identification of Services Refusal- Amendment Required
• Advisory:  Multi-class Application Requirements
• Applicant’s Address Required
• Mark Description Requirement

 

SEARCH OF OFFICE RECORDS- NO CONFLICTING MARKS FOUND

 

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).

 

IDENTIFICATION OF SERVICES- AMENDMENT REQUIRED

 

            Class 38

 

The underlined wording in the identification “Broadcasting and transmission of television programs; Broadcasting and transmission of radio programs; Transmission of information online; Transmission of interactive entertainment software; Podcasting; Transmission of podcasts; Telecommunication services; Provision of on-line communications services; Wireless transmission and broadcasting of television programmes; Interactive broadcasting and communications services; Interactive television and radio broadcasting; Computer aided transmission of messages; Broadcasting of audiovisual and multimedia content via the Internet; Streaming of video material on the internet; Providing access to databases; Providing chat lines utilising the internet; Access to content, websites and portals; Pay-per-view television transmission services; Transmission of database information via telecommunications networks; Message sending via computer networks; Broadcasting of motion picture films via the Internet; Provision of communications via television transmissions; Streaming of television over the Internet; Streaming of data; Provision of access to television via decoding apparatus” is indefinite and must be clarified.

 

Specifically, the identification “Podcasting” is indefinite because the identification is overly broad and could identify service in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “podcasting service” in Class 38 for telecommunications services, including the transmission of media services and “entertainment services, namely providing podcast in the field of {indicate field or subject matter}” in Class 41 for entertainment services.

 

The identification “Telecommunication services” is similarly indefinite because the identification of services in the application includes unacceptably broad wording from the class heading of one or more international classes that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1401.08.  The USPTO considers class headings, whose sole purpose is to indicate the subject matter and general scope of each international class of goods and/or services, to be too broadly worded to identify goods and/or services in a U.S. application.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.02(a), 1401.08, 1402.01 et seq., 1402.07(a).  Therefore, applicant must specify the particular telecommunication services it offers.

 

The identification “Provision of on-line communications services” is indefinite because the identification is overly broad and could identify service in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “Provision of on-line communications services in the nature of {applicant to specify the type of telecommunication services it offers online, e.g., online message sending services}” in Class 38 and “Provision of on-line communications services, namely, providing a website featuring technology that enables users to send messages to others” in Class 42 for computer services, including providing access to non-downloadable services.

 

Similarly, the identification “Access to content, websites and portals” is indefinite because applicant must specify the particular content, whether that be video, audio, digital, etc. . . ., it offered for the identification to be acceptably definite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Finally, the identification “Provision of access to television via decoding apparatus” is indefinite because the applicant must specify the type of access provided for the identification to be acceptably definite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Class 41

 

The underlined wording in the identification “Operating of lotteries; Gambling; Gaming services for entertainment purposes; Sporting activities; Bookmaking, namely, turf accountancy; Entertainment; Production of television and radio programs; Television and radio programme preparation and production; Film production services” is indefinite and must be clarified.

 

Specifically, the identification “Gambling” is indefinite because applicant must specify the particular gambling services it offered for the identification to be acceptably definite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Similarly, the identification “Sporting activities” is indefinite because applicant must specify the particular sporting activities it offered for the identification to be acceptably definite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The identification “Entertainment” is indefinite because the nature of the services offered are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant must specify the particular entertainment services it offers.

 

Similarly, the identification “Television and radio programme preparation” is indefinite because the nature of the services offered are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Moreover, the identification is overly broad and could include services in additional classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “Television and radio programme production” in Class 41 and “Providing advertising, marketing and promotional service, namely development of advertising campaigns for television” in Class 35.

 

Applicant may adopt the following identification of services, if accurate (wording in Bold is suggested, wording is Bold and Italics is explanatory:

 

Class 35 –	(Based on Intent to Use) Television and radio programme preparation services in the nature of television and film promotion services.
Class 38-	(Based on Intent to Use) Broadcasting and transmission of television programs; Broadcasting and transmission of radio programs; Transmission of information online; Transmission of interactive entertainment software; Podcasting services; Transmission of podcasts; Telecommunication services, namely, {applicant to insert specific type such as wireless telephone services, transmission of podcasts, transmission of webcasts, etc. . . .}; Providing voice communication services via the internet; Wireless transmission and broadcasting of television programmes; Interactive broadcasting and communications services; Interactive television and radio broadcasting; Computer aided transmission of messages; Broadcasting of audiovisual and multimedia content via the Internet; Streaming of video material on the internet; Providing access to databases; Providing chat lines utilising the internet; ­­­Telecommunication services, namely, providing access to {specify type of content, audio, video, digital} content, websites, and on-line portals; Pay-per-view television transmission services; Transmission of database information via telecommunications networks; Message sending via computer networks; Broadcasting of motion picture films via the Internet; Provision of communications via television transmissions; Streaming of television over the Internet; Streaming of data; Provision of access to television content via decoding apparatus.
Class 41-	(Based on Section 44) (Based on Intent to Use) Operating of lotteries; Gambling services; Gaming services for entertainment purposes; Sporting activities namely, {specify type, e.g. arranging and conducting sport competitions, organizing sporting events, etc.…}; Bookmaking, namely, turf accountancy; Entertainment services, namely, {insert type e.g. providing a website for on-line gambling, conducting horse races, etc.…};Production of television and radio programs; Television and radio programme production; Film production services.
Class 42 –	(Based on Intent to Use) Provision of on-line communications services, namely, {applicant to specify the non-downloadable communication software it provides online, e.g., providing a website featuring technology that enables users to send messages to others}.

 

Additions to the Identification Not Permitted

 

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

 

For assistance with identifying and classifying 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:  MULTI-CLASS APPLICATION REQUIREMENTS

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 4 classes; however, applicant submitted a fees sufficient for only 2 classes.  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant should note the following additional requirement.

 

APPLICANT’S ADDRESS REQUIRED

 

Applicant must specify its mailing address for the record, including zip code.  37 C.F.R. §2.32(a)(4); TMEP §803.05. Applicant should set forth a current business address in its response.  37 C.F.R. §2.32(a)(4); TMEP §803.05.

 

MARK DESCRIPTION REQUIREMENT

 

Applicant must provide a more accurate and complete description of the mark. See TMEP §808. Applicant may submit the following mark description, if accurate:

 

The mark consists of a rectangle with striated shades of blue containing a stylized “V75” in white with gray shadowing and a design of a profile of a horse head comprised of three white sections with gray shadowing that are slightly separated.

 

See TMEP §§808 et seq.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

ASSISTANCE

 

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 and/or requirement 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. 

 

/Dominic Pino III/

/Dominic R. Pino III/

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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 2/6/2019 FOR U.S. APPLICATION SERIAL NO. 88143612

 

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 2/6/2019 (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.