Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 25, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on January 30, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, an identification in International Class 9 is properly classified in International Class 28.  As a result, applicant must clarify the number of classes in the application.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all identification issues raised in this Office action, in addition to the issues raised in the Office action dated January 30, 2019.  The identification issues raised in the previous Office action are maintained.

 

SUMMARY OF ISSUES that applicant must address:

 

            • Clarify Classification and Identification of Goods and Services

            • Multiple-Class Application Requirements—New Issue

 

Applicant must respond to all issues raised in this Office action and the previous January 30, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

 

Applicant has classified “games adapted for use with television receivers” in International Class 9; however, the proper classification is International Class 28.  Therefore, applicant may respond by (1) adding International Class 28 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “games adapted for use with television receivers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “computer game programs” in the identification of goods is indefinite and must be clarified because applicant must specify the class 9 nature of the software, as is otherwise unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software.  For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii).

 

The identifications “providing analyses and distribution of statistical, quantitative and qualitative information regarding internet websites and their usage” and “information, advisory and consultancy services, all relating to music or music concerts” are indefinite and must specify the nature of Class 35 services provided.  Information and consultancy services are classified according to the subject matter of the information.  The best way to ensure that the information is classified correctly may be to identify the subject matter of the service.  See TMEP §1402.11(b).

 

The wording “television and radio entertainment services in the field of music and entertainment” in the identification of goods is indefinite and must be clarified because applicant must specify the nature of entertainment claimed.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following identification, if accurate (examining attorney’s suggestions in bold font):

 

Class 9:           Sound recordings featuring music; visual recordings and audiovisual recordings featuring music or live concerts; pre-recorded tapes, cassettes, compact discs, films, and video cassettes featuring music and live musical performances; video recorders; prerecorded CD ROMS featuring music; downloadable music from the internet; games adapted for use with television receivers; downloadable computer game programs; downloadable computer software in the fields of music and animation; downloadable telephone ring tones; video cameras; cameras; photographic and cinematographic apparatus and instruments, namely, cameras, exposure meters, filters, flash units, projectors and slides; apparatus for recording, transmission, reproduction of sound or images; photographic transparencies, exposed camera film; batteries; encoded magnetic gift cards, magnetic identifying cards, magnetically encoded credit cards and debit cards; spectacles, spectacle cases, sunglasses; video game discs; mouse pads; screen savers being downloadable computer screen saver software; downloadable electronic publications, namely, books and magazines featuring music, typically supplied on line from databases or from facilities provided on the internet; hologram apparatus

 

Class 28:        Games adapted for use with television receivers

 

Class 35:         Retail apparel stores; on-line retail store services featuring a wide variety of consumer goods of others; mail order catalog services featuring clothing and music; on-line wholesale and retail store services featuring downloadable sound, music, image, video and game files; promoting the concerts of others; procurement, namely, purchasing tickets to entertainment events for others; operating online marketplaces for sellers and buyers of goods and services; providing an on-line computer database in the field of locating products, describing products, rating products, pricing products and comparing prices of products; negotiation of commercial transactions for performing artists; business management of performing artists; marketing services; advertising services; online advertising services; advertising services provided via the Internet; provision of advertising space on an Internet website; business advisory services in relation to the internet; price comparison services; promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; provision of online auction services; provision of business information; business management services; business consultancy services; market research services; providing analyses and distribution of statistical, quantitative and qualitative information regarding internet websites and their usage for business or commercial purposes; business information and administration services; on-line trading services in which users post requests for products and negotiate transactions via the internet; information, advisory and consultancy services, all relating to promotion of music or music concerts

 

Class 41:         Entertainment services, namely, digital video, audio, and multimedia publishing services; organization of music festivals; organization of music concerts; production of concert, musical and video performances; radio entertainment services, namely, providing  music programing; television entertainment services in the nature of ongoing television programs in the field of {indicate specific field, e.g., news, comedy, variety}; digital music and ring tones provided from the internet, namely, providing non-downloadable prerecorded music and ring tones provided from the internet; entertainment services featuring live stage production and cabaret; production of video and/or sound recordings; presentation, production and performance of shows, musical shows, concerts, videos, multimedia videos and radio and television programs, sound recording and video entertainment services, in the nature of providing a website featuring non-downloadable music and concert videos; production and distribution of motion picture films; arranging and conducting of seminars, conferences and exhibitions in the field of music; publication of books, magazines and other texts; information, advisory and consultancy services, all relating to music, musical selections and arrangements for sound recordings and live performances

 

See TMEP §§1402.01, 1402.03.

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fees sufficient for only 3 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 Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES 

 

Questions:     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 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. 

 

Examiner’s Amendment:    Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Jaime Batt/

Jaime Batt

Trademark Examining Attorney

Law Office 125

(571) 272-1125

jaime.batt@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 July 25, 2019 for

U.S. Trademark Application Serial No. 88151812

 

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. 

 

 

/Jaime Batt/

Jaime Batt

Trademark Examining Attorney

Law Office 125

(571) 272-1125

jaime.batt@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 July 25, 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.”