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: 1/18/2019

 

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

 

 

SUMMARY OF ISSUES:

• Prior Filed Application
• Identification of Goods and Services – Amendment Required

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87749564 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The wording “downloadable mobile application for providing motorsports and esports programming and information” in the identification of goods in International Class 9 is indefinite and must be clarified because the nature of the “programming” function of the software must be further specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  “Programming” could refer to producing television programs or radio programs for example.

 

The wording “downloadable mobile application for providing previews, alerts, replays, video clips of motorsports competitions, and web cam feeds, all in the field of motorsports and esports” in International Class 9 is overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   For example, “providing electronic message alerts via the internet” are in International Class 38, and electronic alerts that are considered to be only the means by which the content provider’s services are rendered are classified based on the subject matter of the content.

 

The wording “downloadable mobile application for providing entertainment and motorsports and esports related news” in International Class 9 is indefinite and must be clarified because the nature of the “entertainment” function of the software must be further specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  “Entertainment” could refer to entertainment information, games, etc.

 

Applicant must clarify the wording “providing motorsports and esports news, information, previews, alerts, and replays via wireless and mobile devices” in the identification of services in International Class 41 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  It is unclear if the “previews, alerts, and replays” are meant to indicate the format in which the “news and information” are presented or if they are meant to be separate services. In addition, “wireless and mobile devices” do not identify a type of network over which information may be transmitted. Further, this wording could identify services in more than one international class.  For example, “providing electronic message alerts via the internet” are in International Class 38, and electronic alerts that are considered to be only the means by which the content provider’s services are rendered are classified based on the subject matter of the content. 

 

Applicant must clarify the wording “entertainment services, namely, providing programming and information, previews, alerts, replays, scoring data, video clips, and live web cam feeds in the fields of motorsports and esports, all of which delivered by television, radio, downloadable mobile software applications, and the internet” in the identification of services in International Class 41 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  It is unclear if the “previews, alerts, replays, scoring data, video clips, and live web cam feeds” are meant to indicate the format in which the “programming and information” are presented or if they are meant to be separate services. In addition, “programming” could refer to producing television programs or radio programs, as well as “television programming” which is a scheduling service. Further, this wording could identify services in more than one international class.  For example, “providing electronic message alerts via the internet” are in International Class 38, and electronic alerts that are considered to be only the means by which the content provider’s services are rendered are classified based on the subject matter of the content.  The wording “via downloadable mobile software applications” does not identify a type of network over which information may be transmitted.

 

Applicant must clarify the wording “entertainment services in the nature of computer and video programs, sports-themed games, and fantasy sports and esports leagues, provided via downloadable mobile software applications and via global computer and wireless networks” in the identification of services in International Class 41 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  “Computer and video programs” must be clarified because the wording does not make clear the nature of the “computer and video programs” and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Applicant must specify the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

For example, the following are acceptable identifications for software in International Class 9:  “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications for software in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”  Finally, the following are acceptable identifications for non-downloadable game software in International Class 41:  “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.”  For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.

 

In addition, the wording in this clause, “sports-themed games,” is indefinite and overly because it is unclear if the services are non-downloable sports-themed video games, or actual athletic competitions, or even a sports-themed board game which would be properly classified in International Class 28.  Furthermore, the wording “provided via downloadable mobile software applications” contradicts the non-downloadable nature of the computer and video games that would be properly classified in Class 41.

 

Applicant may substitute the following wording, if accurate: 

 

            Class 9: Downloadable mobile applications for use in fantasy sports leagues, namely, mobile applications for managing and participating in fantasy sports leagues; downloadable mobile application for providing motorsports and esports television and radio programs and information; downloadable mobile application for sports betting; downloadable mobile application for providing previews, replays, video clips of motorsports competitions, and web cam feeds, and receiving alerts all in the field of motorsports and esports; downloadable mobile application for providing entertainment in the nature of motorsports and esports related news; video lottery ticket terminals or dispensers; electronic terminal for an electronic lottery system which generates lottery tickets; computer game software for gaming machines, namely, slot machines, bingo machines, and video lottery terminals; computer gaming software for gambling, betting

 

            Class 16: Printed matter, namely, newspapers, periodicals, magazines, books all in the fields of gambling, betting and sports

 

            Class 38: Web messaging services for the relay of news, data, information and press releases of all types, in particular in the field of sports and betting, to Internet addresses; electronic transmission of information and images via electronic communications networks; electronic delivery of messages in the nature of news and press releases in the field of sports and betting, delivery of start times of sports events, winning quotations for betting, betting data, betting parameters, sports results in the nature of real time results and statistics on sports events, sportspeople and sports teams, as well as communications on sports teams, all via a global computer network; providing online Internet discussion forums on sports, betting and betting related content; providing live online chat rooms for transmission of messages among computer users concerning sports, betting and betting related content, providing live online chat lines utilizing the Internet; outcall notification services, namely, providing immediate telephone, SMS and e-mail notifications in the field of sports and betting to betting associations, organizations and offices

 

Class 41: Betting services; wagering services; gambling services; providing betting facilities; providing gambling facilities; leasing of electronic gaming machines for betting and gambling; entertainment services, namely, providing a website for on-line gambling and betting; gaming services in the nature of casino gambling, conducting online computer game tournaments; providing an on-line computer web site notifying individuals that they have won a lottery or other forms of gambling, where one or more winning numbers have been picked; providing motorsports and esports news and information in the nature of previews, news and information alerts, and replays via wireless and mobile networks; entertainment services, namely, production of motorsports and esports television and radio programs and providing motorsports and esports information in the nature of previews, news and information alerts, replays, scoring data, video clips, and live web cam feeds, all of which delivered by television, radio, downloadable mobile software applications, and the internet; entertainment services in the nature of online computer and video game programs, online sports-themed computer and video games, and fantasy sports and esports leagues, provided via downloadable mobile software applications and via global computer and wireless networks; bookmaking services, namely, providing of information related to sports betting; organizing, arranging, conducting sports betting and gambling tournaments, competitions and contests

 

            Class 42: Computer services, namely, creating an on-line virtual environment for purposes of betting and gambling

 

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).

 

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.

 

RESPONSE GUIDELINES

 

If you have any questions about this Office action please call or email the assigned trademark examining attorney.  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.  

 

 

 

/Sarah E. Steinpfad/

Sarah E. Steinpfad

Trademark Examining Attorney

Law Office 120

571-270-3089

Sarah.Steinpfad@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 1/18/2019 FOR U.S. APPLICATION SERIAL NO. 88144650

 

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 1/18/2019 (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.