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: 3/22/2019

 

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.

 

Search

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 Goods and Services

The identification for software in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See 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).

 

The following are examples of acceptable identifications for software in International Class 9:  “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

 

The identification for “systems” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d). 

 

Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

The identification for “publications” in International Class 9 is indefinite and too broad and must be clarified because the word does not make clear whether the “publications” are products or services and thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether “publications” identifies print publications in International Class 16, electronic publications in International Class 9 or 41, and/or online/Internet publications in International Class 41, and amend the identification to provide the additional information specified below for such goods and services. 

 

If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications.  TMEP §§1402.03(e), 1402.07(b).  For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See id.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.  Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  See TMEP §§1402.07(b), 1402.11(a)(x). 

 

The following are examples of acceptable formats for identifications for electronic or online/Internet publications (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or

 

Non-downloadable electronic publications in the nature of {indicate specific nature of publications} in the field of {indicate subject matter} in International Class 41. 

 

The identification for educational services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. 

 

Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

The applicant should also note the following additional wording that requires clarification as specified and suggested below in bold.

 

Applicant may adopt the following wording, if accurate: 

 

Class 9

Computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use} that may be downloaded from a global computer network; Pre-recorded downloadable audio recordings featuring entertainment programming; pre-recorded video recordings featuring entertainment programming; pre-recorded downloadable audio and visual recordings featuring entertainment programming; audiovisual works, data files, and electronic works in the nature of downloadable audiovisual files, all of the aforementioned downloadable via the internet or other computer or communications network featuring entertainment programming; Computer application software for mobile devices for use in providing users with access to searchable databases; software for wireless content delivery; downloadable software featuring an entertainment database featuring information, news, reviews and user comments about television shows, motion picture films, celebrities, actors, and the entertainment industry for use on computers and mobile devices; software for accessing information on the Internet or other computer or communications network; software for formatting and converting content, text, visual works, audiovisual works, data, files and electronic works into a format compatible with portable electronic devices and computers; software enabling content, text, visual works, audiovisual works, data, files and electronic works to be downloaded to and accessed on a computer or other portable consumer electronic device; Computer application software for organizing, transmitting, manipulating, processing, streaming, playing and reviewing text, audio, video, images, and other multimedia content on digital electronic devices; computer application software that enables users to generate customized recommendations of videos, television programs, and motion pictures based on user preferences; computer application software for use in sharing, researching, commenting on, and rating videos, television programs, motion pictures, celebrities, and other information about the entertainment industry; Computer application software for use with mobile, portable and handheld devices that allow users to purchase movie tickets for movies, to view movie trailers, videos, movie reviews, to view and manipulate information about movies, show times, theater locations, and other entertainment events, and to share the foregoing information among other users; computer application software for accessing, searching, browsing, displaying, reporting, reading, recommending, sharing, posting in social media, organizing, tracking, and streaming entertainment events and information and news content related to the entertainment industry; Computer software for streaming, broadcasting, transmitting, distributing, reproducing, organizing and sharing music, audio, video, games, audiovisual, multimedia content and other data via a global communications network; Computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, viewing, storing and organizing text, data, images, audio and video files, and multimedia content; Computer software to enable users to view or listen to audio, video, text and multimedia content; Computer software for creating and providing user access to searchable databases of information and data; search engine software; computer software for facilitating payments and online transactions; computer software for use in disseminating advertising for others; Computer software for use in sharing information about products, services, and deals; computer software for electronic storage of data; computer software for image and speech recognition; computer software for home automation; computer software for purchasing, accessing and viewing movies, TV shows, videos, music, and multimedia content; internet browser software; downloadable music files; downloadable audiovisual and multimedia content featuring fiction and non-fiction stories on a variety of topics provided via a video-on-demand service; downloadable motion pictures and television shows featuring fiction and non-fiction stories on a variety of topics, and audio and video recordings featuring fiction and non-fiction stories on a variety of topics; downloadable audio files, multimedia files, text files, written documents, audio material, video material featuring fiction and non-fiction content on a variety of topics; Downloadable mobile applications to enable users access to music, audio, video, games, audiovisual, multimedia content and other data; digital media streaming devices; portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks and electronic and mechanical parts and fittings thereof, namely, {the applicant must identify specific electronic devices by common commercial name}; computers, tablet computers, audio and video players, electronic personal organizers, personal digital assistants, and global positioning system devices and electronic and mechanical parts and fittings thereof; magnetically encoded gift cards; computer software for the collection, organizing, modifying, book marking, transmission, storage, and sharing of data and information; software for text, image and sound transmission and display; computer software for online shopping; handheld devices for controlling televisions, speakers, amplifiers, stereo systems, and entertainment systems, namely, {applicant must identify specific goods by common commercial name e.g., remote controls}; computer software for information management; database synchronization software; computer programs for accessing, browsing, and searching online databases; software for the synchronization of data between a remote station or device and a fixed or remote station or device; software for telecommunication and communication via local or global communications networks; software for access to communications networks including the Internet; media players, voice recording and voice recognition apparatus; televisions; television receivers; television monitors; stereo systems, home theater systems, and home entertainment systems comprised of {the applicant must list the specific components of the systems by common commercial name}; computer operating system software; computer software for configuring, operating and controlling mobile devices, wearable devices, mobile phones, computers, and computer peripherals, and audio and video players; computer software for creating searchable databases of information and data for peer-to-peer social networking databases; computer game software; downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals and other publications in the nature of {identify specific publications by common commercial name and specify the subject matter and field|;{applicant must specify the nature of the goods featuring animated cartoons e.g., video disks and video tapes with recorded animated cartoons} animated cartoons; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, the aforesaid goods.

 

Class 35

Advertising; business management; business administration; Providing an on-line commercial information directory; dissemination of advertising for others via an on-line electronic communications network; Providing a searchable on-line advertising guide featuring the goods and services of others; database management services; on-line ordering services featuring movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, videos and DVDs, and other audiovisual works; Providing online business directory information, namely, providing information regarding the location or addresses of movie theaters; computerized on-line searching and ordering service featuring movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, and other audiovisual works in the form of videocassettes, compact disks, DVDs, digital downloads and direct digital transmission; association services, namely, providing opportunities for exchange of information and conversation regarding a wide variety of topics by means of product reviews; directory services to help locate people, places, organizations, phone numbers, network home pages, and electronic mail addresses; Providing an online searchable database featuring employment and career opportunities and business, employment and professional information; providing an online searchable database featuring movie, motion picture and television talent casting employment opportunities and talent casting employment information; providing online computer databases and online searchable databases in the fields of business and professional networking; providing online career networking services and information in the fields of employment, recruitment, job resources, and job listings; providing networking opportunities for individuals seeking employment; on-line professional networking opportunities; Online retail store services featuring streamed and downloadable pre-recorded audio, video and audiovisual content in the nature of {the foregoing wording is extremely broad, the applicant must specify the nature of the provided content and field}; compiling of information into computer databases; comparison shopping services namely, promoting the goods and services of others; computerized database and file management; creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others {the specific services the applicant is providing is not clear if the applicant is compiling information into computer databases, the applicant should so indicate.}; order fulfillment services namely, services relating to order processing; promoting the goods and services of others by providing, searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others{ the applicant must clarify the foregoing service to identify specific services by common commercial name, as the nature of the services are indefinite but appear to identify data retrieval services which are classified in International Class 42}.

 

 

Class 38

Telecommunications, namely, {the applicant must identify specific telecommunication services by common commercial name e.g., telecommunication access services} ; Electronic communication services, namely, transmission of information by electronic communications networks; electronic transmission of data, audio, video, and audio/video files; wireless broadband communications services; {the applicant must specify the type of broadcasting services e.g., cable television broadcasting services} broadcasting services; video communication services, namely, broadcasting, streaming, and transmitting videos, images, music audio, multimedia over the Internet or other communications network; data streaming; computer services, namely, providing multiple-user access to computer networks for the electronic transmission of various data, communications, documents and personal and professional information; providing access to an interactive computer database featuring automatically updating address book, personal planner, date reminder, travel planner, and alumni and professional group links, via a global computer network; providing a web site that gives computer users the ability to transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, photos, videos, data, files, documents, images and other electronic works{the applicant must clarify the nature of the foregoing services, as a website featuring technology identifies class 42 services. As currently worded the services would be classified in class 42}; providing an on-line link to current events and reference material relating to movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, videos and DVDs and other audiovisual works{ the applicant must clarify the nature of the foregoing services, as the wording providing a “link” fails to identify class 38 services and fails to clearly identify the nature of the intended services}; provision of email newsletters and digital magazines {the applicant is advised that providing email newsletters and digital magazines likely identifies class 41 services. The applicant should reclassify the services to that class with a specified subject matter. Otherwise, applicant should specify a class 38 function related to said email newsletters and digital magazines e.g., providing electronic access to email newsletters and digital magazines}; Video-on-demand transmission; Internet protocol television (IPTV) transmission services; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; electronic transmission and streaming of digital media content for others via global and local computer networks; telecommunication services, namely, transmission and streaming of voice, data, images, films, television programs, audio and audiovisual programs and other digital media content and information by means of telecommunications networks, wireless communication networks, and the internet; streaming of audio, video and audiovisual material on the Internet, communications networks and wireless telecommunications networks; streaming of data; streaming of music, films, movies, TV shows and games on the Internet; audio and video broadcasting services; broadcasting of cinematographic films and audiovisual programs; subscription-based audio and video broadcasting services over the Internet; broadcasting services and provision of telecommunication access to films, television programs, audio and audiovisual programs and other digital media content and information, provided via a video-on-demand service; Internet broadcasting services; telecommunication services, namely, transmission of webcasts; transmission of digital files; transmission of digital content by computer networks, the Internet, DSL, cable networks, digital download, digital streaming, video-on-demand, near-video-on-demand, TV, free-to-air TV, pay-per-view TV, satellite, cable, telephone or mobile telephone; electronic transmission of digital photo files among Internet users; providing access to online directories, databases, websites, blogs, music, video programs, and reference materials; transmission of news; providing telecommunication connectivity services for the transfer of images, messages, audio, visual, audiovisual and multimedia works among mobile phones, smartphones, portable electronic devices, portable digital devices, tablets, or computers; transmission of television and movie guides; {the following wording is broad and could identify services in several international classes the applicant must identify a class 38 mode of communication between computers e.g., communication by computer terminals}communication between computers; provision of access time to multimedia materials on the Internet; provision of telecommunications connections to computer databases; transmission of data by audio-visual apparatus controlled by data processing apparatus or computers.

 

Class 41

Education in the nature of {the applicant must specify the mode of the educational services and the field}; entertainment services in the nature of {the applicant must identify specific class 41 educational services e.g., providing live musical concerts}; sporting and cultural activities; Entertainment services in the nature of a {applicant must specify the type of program, as software programs can be classified in International Class 42}program, featuring reviews, news, and information in the field of motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics, namely, an ongoing {applicant must specify the type of program, as software programs can be classified in International Class 42}program accessible by television, cable, the Internet and wireless communications networks; providing an online non-downloadable {applicant must specify the type of program, as software programs can be classified in International Class 42}program featuring reviews, news, and information in the field of motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics; providing information via a global computer network in the field of entertainment and entertainment-related topics; providing information on motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics via social networks; television schedule information services{applicant should note this is a duplicate entry}; providing an online computer database featuring reviews, news, information and content in the field motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics; movie schedule information services; television schedule information services{applicant should note this is a duplicate entry}; entertainment in the nature of conducting contests, competitions and online computer games in the field of entertainment; entertainment services, namely, publishing journals and blogs featuring information and opinions in the field of entertainment; providing on-line newsletters featuring reviews, news and information in the field of motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics; providing a website with information in the fields of motion pictures, television shows, celebrities, entertainment industry and entertainment-related topics; entertainment services in the nature of non-downloadable videos featuring information in the fields of motion pictures, television shows, celebrities, entertainment industry and entertainment-related topics; providing information in the field of movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, videos and dvds, other audiovisual works, celebrities and the entertainment industry; providing a website that displays movie rankings; providing a website featuring a ranking system measuring popularity of celebrities and identifying trends in public perception and awareness of movie personalities; providing a website featuring entertainment trivia; providing a web site featuring movie, motion picture and television casting and production information; arranging for ticket reservations for film screenings, festival events, shows and other entertainment events; online ticket agency services for film screenings, festival events, shows and other entertainment events; booking agency services for cinema tickets; booking of entertainment, booking seats for shows, booking agency services for cinemas, film festivals and events; film exhibition services for entertainment purposes {the applicant must specify a class 41 purpose for the services for classification therein}; hosting and organizing awards relating to films, namely, {clarify the specific nature of the award services e.g., providing recognition in the way or wards to demonstrate excellence in the field of film}; production of podcasts and vodcasts; providing on-line computer games and on-line interactive stories; publication of film reviews, reviews of entertainment products including television programs, radio programs, podcasts, vodcasts and computer games; quizzes and gaming services in the nature of {specify the nature of the “quizzes and gaming”, e.g., casino gambling, conducting online computer game tournaments, etc.}; providing a website featuring non-downloadable audio, video and audiovisual content in the nature of recordings featuring movies, TV shows, videos and music in the field of {applicant must specify a class 41 entertainment field}; entertainment services, namely, providing temporary use of non-downloadable online video{applicant must clarify the foregoing wording to identify specific services and field because as worded the language potentially identifies class 42 services}; provision of non-downloadable videos featuring programs on a wide variety of entertainment topics via a video-on-demand service; provision of non-downloadable films, movies and television shows  in the field of {the applicant must specify a field} via a video-on-demand service; distribution and rental of entertainment content, namely, computerized on-line searching and ordering service featuring movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, and other audiovisual works in the form of digital downloads and direct digital transmission viewable over computer networks and global communication networks; film and video rental services; rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music; film, movie, TV show and video production and distribution; providing a searchable database featuring audio, video and audiovisual content through the Internet, telecommunications networks and wireless telecommunications networks in the field of movies, TV shows, videos and music; digital audio, video and multimedia publishing services; entertainment services, namely, providing non-downloadable prerecorded music and audio programs featuring fiction and non-fiction stories on a variety of topics, and information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment services, namely, live visual and audio performances, musical, variety, news, dramatic and comedy shows; entertainment services, namely, providing a website featuring the ratings and reviews of television, movies, videos, music, screenplays, scripts, books and video game content; entertainment information; arranging of contests; sweepstake services; sweepstake services provided over a global computer network hosting online sweepstakes and contests for others; publishing of books, magazines, periodicals, literary works, visual works, audio works, and audiovisual works; presenting live musical concerts and performances; entertainment services, namely, profiling of musicians, artists and bands by providing non- downloadable video clips of musical performances over a global computer network; providing non-downloadable interactive resource for searching, selecting, managing, and viewing audiovisual content in the nature of recordings featuring movies, TV shows, videos and music; providing online newsletters in the field of television, movies, and videos via e-mail; providing online electronic publications, not downloadable; publication of texts, other than publicity texts; writing of texts, other than publicity texts; movie theatre presentations; arranging and conducting of concerts; entertainment, amusements, namely, {the foregoing wording is broad, the applicant must identify specific services by common commercial name}; {specify the type of game services e.g., virtual reality or video game services} game services provided on-line from a computer network; production of television programs; rental of sound recordings; subtitling; television entertainment in the nature of {identify specific entertainment e.g., television news shows}; organization of {specify the type of competitions e.g., sports competitions} competitions; organization of exhibitions for cultural or educational purposes; videotape editing; videotaping; education information, namely, {providing information about education} {the applicant should note the foregoing language requires clarification for classification in international class 41, as educational information is not acceptable - all information educates but information with a subject matter in a class other than 41 is in the class of the subject matter, even if the information is characterized as “educational}.

 

Class 42

Industrial analysis and research services; design and development of computer hardware and software; Non-downloadable software for streaming audio and video content on mobile phones, tablets, personal computers, and televisions; cloud storage services, namely, providing electronic data storage accessible via the internet of electronic media, namely, audio and video content; providing use of on-line non-downloadable software for analyzing media data; hosting databases and on-line bulletin boards featuring general news and information regarding movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, videos and DVDs, and other audiovisual works; computer programming; database aggregation, integration and management services {the applicant must clarify the foregoing wording as “database management’ identifies class 35 services and must be reclassified and database aggregation and integration fail to identify specific services by common commercial name}; providing on-line non downloadable {the applicant must specify the software is non downloadable for classification in International Class 42} interactive computer software for managing, viewing and editing information such as event scheduling, address books, and other personal contact information; Non-downloadable computer software for organizing, transmitting, manipulating, processing, streaming, playing and reviewing text, audio, video, images, and other multimedia content on digital electronic device, computers, and televisions; providing use of non-downloadable computer software for generating customized recommendations of videos, television programs, and motion pictures based on user preferences; providing use of non-downloadable computer software for use in sharing, researching, commenting on, and rating videos, television programs, motion pictures, celebrities, and other information about the entertainment industry; providing use of non-downloadable computer software for use with mobile, portable and handheld devices that allow users to purchase movie tickets for movies, to view movie trailers, videos, movie reviews, to view and manipulate information about movies, show times, theater locations, and other entertainment events, and to share the foregoing information among other users; providing use of non-downloadable computer software for accessing, searching, browsing, displaying, reporting, reading, recommending, sharing, posting in social media, organizing, tracking, and streaming entertainment events and information and news content related to the entertainment industry; providing search engines for obtaining data about the entertainment industry via electronic communications networks; Computer services, namely, creating an on-line community for registered users to participate in discussions, share information and resources, and engage in social, business and community networking; providing a website featuring temporary use of non-downloadable software enabling users to search, locate and communicate with others via electronic communications networks to network and track online references to job opportunities and business topics; computer services in the nature of customized web pages featuring user-defined information, personal profiles, audio and images {the applicant must clarify the entry as web pages featuring user defined information are classified in International Class 42 but webpages featuring personal profiles, audio and images are not clear unless the applicant clarifies the services involve the design of such webpages for others}; cloud computing featuring software for use in database management; computer services, namely, an online interactive electronic bulletin board in the field of entertainment and the entertainment industry {applicant must clarify and reclassify the services, as online bulletin board services are classified in International Class 38}; computer services, namely, hosting an online database featuring a wide range of general interest information via the internet; computer services, namely, cloud hosting provider services; computer services, namely, creating computer network-based indexes of information, websites and resources; computer software development in the field of mobile applications; creating electronically stored web pages for on-line services and the Internet for others; developing and maintaining computer application software and embedded computer application software for handheld electronic devices in the nature of mobile phones, smart phones and tablet devices; developing computer programs for accessing, browsing and searching online databases; electronic data storage; electronic storage of audio files; electronic storage of images; electronic storage of videos; hosting a website for the electronic storage of data, audio files, images, and videos; hosting of digital content on global computer networks, wireless networks, and electronic communications networks; hosting of third party content, photos, videos, text, data, images, web sites and other electronic works; hosting an online service for analyzing personal preferences and generating recommendations; hosting a website that gives users the ability to review various print, photographic, graphic image, and audio and video content and utilize a custom template to provide input, likes, dislikes, edits, changes, modifications, opinions, suggestions, and comments and engage in social, business and community networking; providing temporary use of on-line non-downloadable software and applications for accessing streaming audio and video files, games, social networks, text files and multimedia files; providing temporary use of non-downloadable computer software for wireless content delivery; providing temporary use of non-downloadable computer software for streaming, broadcasting, transmitting, distributing, reproducing, organizing and sharing music, audio, video, games and other data; providing temporary use of non-downloadable computer software for purchasing, accessing and viewing movies, TV shows, videos, music, and multimedia content; hosting of digital content on the Internet {reclassified from international Class 45}; file sharing services, namely, providing a website featuring technology enabling users to upload and download electronic files {reclassified from international Class 45}.

 

Class 45

Personal and social services rendered by others to meet the needs of individuals, namely, {applicant must identify specific services by common commercial name e.g., personal shopping for others}; Internet based social introduction and online social networking services; Online social networking services; online social networking services in the field of entertainment; social networking services in the field of entertainment provided via a website and communications networks; providing on-line computer databases and on-line searchable databases in the field of social networking; providing a social networking website for entertainment purposes; providing a searchable database featuring audio, video and audiovisual content available through the Internet, telecommunications networks and wireless telecommunications networks in the field of online social networking; hosting of digital content on the Internet {the applicant must reclassify the services to international class 42, as the services are not classified in international Class 45}; file sharing services, namely, providing a website featuring technology enabling users to upload and download electronic files{the applicant must reclassify the services to international class 42, as the services are not classified in international Class 45}.

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Combined Applications

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 Section 1(b):

 

(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

 

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).

 

For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

Fee

The filing fees for adding classes to an application are as follows:

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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.  

 

 

 

/Elizabeth N. Kajubi/

Examining Attorney

Law Office 107

(571) 272-2727

elizabeth.kajubi@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 3/22/2019 FOR U.S. APPLICATION SERIAL NO. 88236059

 

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 3/22/2019 (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.