Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 05, 2019

 

The assigned trademark examining attorney has reviewed the applicant’s response dated September 28, 2019, in which the applicant provides arguments against the section 2(d) likelihood of confusion refusals, provides arguments against the cited prior pending application, provides an amendment to the identification of goods and services and provides a foreign registration.  The trademark examining attorney accepts the arguments against the section 2(d) likelihood of confusion refusals, accepts the argument against the cited prior pending application and accepts the foreign registration but rejects the proposed amendments to the identification of goods and services.  The trademark examining attorney lifts the section 2(d) likelihood of confusion refusal.   

The trademark examining attorney’s determination with regard to the identification of goods and services requirement is maintained and made FINAL. 37 C.F.R. §2.64(a)

 

Identification of Goods and Services

The following applies to international classes 009 and 041 only.

The identification of goods and services is indefinite and must be clarified because as currently claimed the goods and services are overly broad and vague.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must provide more detail regarding their claimed goods and services.  Suggestions and explanations are incorporated into the identification proposed below.  Applicant may adopt the following identification, if accurate: 

 

International Class 009:

 

 

Sound recordings featuring golf instruction, golf information, golf commentary, golf tournament commentary, historical golf commentary, golf sound effects and music; compact discs featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; DVDs featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; digital recording media namely DVDs, downloadable audio and video recordings, and CDs featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; video tapes featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; recorded film featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; video recordings featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; electronic puphotographic transparencies; photographic slide transparencies; exposed photographic film; Downloadable {must be downloadable to be properly classified in class 009}electronic publications, namely, magazines, programmes, brochures, journals, newsletters, flyers, books, tournament schedules, match results, draws or scores, rankings, player statistics, instructional and teaching materials in the field of sport, including golf; downloadable electronic publications in the nature of magazines, programmes, brochures, journals, newsletters, flyers, books, tournament schedules, match results, draws or scores, rankings, player statistics, instructional and teaching materials in the field of sport, including golf; downloadable images consisting of or containing information relating to tournament schedules, match results, draws or scores, rankings, player statistics, photographs at events and tournaments, all relating to sport, including golf, golf matches or golf tournaments; downloadable sound recordings featuring golf instruction, golf information, golf commentary, golf tournament commentary, historical golf commentary, golf sound effects and music; downloadable educational software featuring instruction in the field of sport, including golf; downloadable educational course materials in the field of sport, including golf; {must be downloadable to be properly classified in class 009}Downloadable computer programmes for providing information in the field of sport, including golf, for education or entertainment; downloadable computer programs for providing information in the field of sport, including golf, for education or entertainment; computer software downloadable from the Internet for providing information in the field of sport, including golf, for education or entertainment; downloadable software for providing information in the field of sport, including golf, for education or entertainment; downloadable game software; downloadable interactive software for {must provide the function of the software} education or entertainment; downloadable computer software for providing information in the field of sport, including golf, for education or entertainment; downloadable computer games software; recorded computer application software for providing information in the field of sport, including golf, for education or entertainment; Downloadable computer application software for mobile phones, namely, software for providing information in the field of sport, including golf, for education or entertainment; computer application software for mobile phones, namely, software for {must provide the function of the software}; downloadable software for use on  mobile phones for {must indicate that the software is downloadable and provide the function of the software}; downloadable podcasts in the field of sport, including golf; downloadable electronic game software; cases for mobile phones; protective cases for tablet computers; straps for mobile phones; mobile phone covers; carrying cases for mobile phones; protective cases for mobile phones; mouse mats; sunglasses

 

International Class 041:

 

Education services, namely, education courses, conferences, seminars and workshops {“and the provision of educational information” should be removed otherwise the information provided must be classified according to the subject matter of the information provided, e, g., golf course business management in class 035 if the clause is removed all subjects can stay in class 041}in the fields of spotst, including golf, golf instruction, the rules of golf, golf course management, golf tournaments, golf broadcasting and coaching in the field of sports; training services, namely, arranging and conducting personal training, classes, workshops, conferences and seminars in the field of sport, including golf, golf instruction, the rules of golf, golf course management and golf tournament hosting; arranging, organising and conducting sporting events and events for cultural pruposes, {“including” must be replaced with the inclusive term “namely”} golf tournaments, golf competitions and golf events; organisation of sporting events, namely, {must indicate the specific sporting event, e.g. golf tournament}; organisation of sports events in the field of golf; Special event planning for social entertainment purposes in the field of sports; organisation and conducting of golf tournaments and golf competitions; providing sports facilities; organising, arranging and conducting sport events in the field of golf; organisation and conducting of live golf tournaments and live golf competitions; entertainment services in the nature of amateur and professional golf players competing in live golf tournaments and live golf competitions; providing golf facilities; golf club services; coaching in the field of sports; providing education courses in the field of sports offered through online, non-downloadable videos and instructor assistance; conducting seminars in the field of golf; arranging and conducting educational conferences; arranging and conducting of workshops in the field of golf; entertainment services, namely, organising and conducting golf and other sporting events, golf and other sporting tournaments and golf and other sporting competitions; electronic games services provided by means of the internet; providing on-line publications in the nature of magazines, programmes, brochures, journals, books, flyers, newsletters, tournament schedules, match results, draws or scores, rankings, player statistics, instructional and teaching materials all in the field of sport, including golf; providing on-line computer games; provision of entertainment information via television, broadband, wireless and on-line services; recreation information services {must specify the field of the recreation information and classify the services accordingly, e.g. golf}; television and radio entertainment, namely, distribution of television shows and radio shows relating to golf and other sports; provision and production of television and radio entertainment, namely, programmes and broadcasts relating to sport, including golf or golf tournaments; sporting services, namely, providing information relating to sports and sporting events; production of audio recording; film and video production services; ticket reservation and booking services for sporting events; hospitality services, namely, booking of seats for {“and experiences at” is vague and should be removed or claimed in more detail} live sporting events; Encouraging participation in golf competitions and events by establishing rules and providing governance for golf tournaments, competitions and events; Officiating at sports contests, namely,  advising on the proper application of the rules of golf and advising on the rules of competitive golf competitions

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Partial Abandonment

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods and to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  electronic publications, namely, magazines, programmes, brochures, journals, newsletters, flyers, books, tournament schedules, match results, draws or scores, rankings, player statistics, instructional and teaching materials in the field of sport, including golf; computer programmes for providing information in the field of sport, including golf, for education or entertainmen; downloadable interactive software for education or entertainment; recorded computer application software including mobile phone applications and downloadable application software from the Internet or other computer network for providing information in the field of sport, including golf, for education or entertainment; downloadable computer application software including mobile phone applications and downloadable computer software from the Internet or other computer network for providing information in the field of sport, including golf, for education or entertainment; computer application software for mobile phones; software for mobile phones; Education services, namely, education courses, conferences, seminars and workshops and the provision of educational information in the field of sport, including golf, golf instruction, the rules of golf, golf course management, golf tournaments, golf broadcasting, coaching in the field of sports; arranging, organising and conducting sporting and cultural activities, including golf tournaments, golf competitions and golf events; organisation of sporting events; organisation of sports events in the field of golf; event planning in the field of sporting events; recreation information services; hospitality services, namely, booking of seats for and experiences at live sporting events, including special event planning in the field of golf; establishing rules and providing governance for golf tournaments, competitions and events; sports officiating services, including, advising on the proper application of the rules of golf and advising on the rules of competitive golf competitions.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and only:  the goods and services in classes 016, 025, 036, 045 and .Sound recordings featuring golf instruction, golf information, golf commentary, golf tournament commentary, historical golf commentary, golf sound effects and music; compact discs featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; DVDs featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; digital recording media namely DVDs, downloadable audio and video recordings, and CDs featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; video tapes featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; recorded film featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; video recordings featuring golf instruction, golf information, golf commentary, golf tournament commentary and footage, historical golfing footage and golf commentary; electronic puphotographic transparencies; photographic slide transparencies; exposed photographic film; downloadable electronic publications in the nature of magazines, programmes, brochures, journals, newsletters, flyers, books, tournament schedules, match results, draws or scores, rankings, player statistics, instructional and teaching materials in the field of sport, including golf; downloadable images consisting of or containing information relating to tournament schedules, match results, draws or scores, rankings, player statistics, photographs at events and tournaments, all relating to sport, including golf, golf matches or golf tournaments; downloadable sound recordings featuring golf instruction, golf information, golf commentary, golf tournament commentary, historical golf commentary, golf sound effects and music; downloadable educational software featuring instruction in the field of sport, including golf; downloadable educational course materials in the field of sport, including golf; downloadable computer programs for providing information in the field of sport, including golf, for education or entertainment; computer software downloadable from the Internet for providing information in the field of sport, including golf, for education or entertainment; downloadable software for providing information in the field of sport, including golf, for education or entertainment; downloadable game software; downloadable podcasts in the field of sport, including golf; downloadable electronic game software; cases for mobile phones; protective cases for tablet computers; straps for mobile phones; mobile phone covers; carrying cases for mobile phones; protective cases for mobile phones; mouse mats; sunglasses; training services, namely, arranging and conducting personal training, classes, workshops, conferences and seminars in the field of sport, including golf, golf instruction, the rules of golf, golf course management and golf tournament hosting; organisation and conducting of golf tournaments and golf competitions; providing sports facilities; organising, arranging and conducting sport events in the field of golf; organisation and conducting of live golf tournaments and live golf competitions; entertainment services in the nature of amateur and professional golf players competing in live golf tournaments and live golf competitions; providing golf facilities; golf club services; coaching in the field of sports; providing education courses in the field of sport offered through online, non-downloadable videos and instructor assistance; conducting seminars in the field of golf; arranging and conducting educational conferences; arranging and conducting of workshops in the field of golf; entertainment services, namely, organising and conducting golf and other sporting events, golf and other sporting tournaments and golf and other sporting competitions; electronic games services provided by means of the internet; providing on-line publications in the nature of magazines, programmes, brochures, journals, books, flyers, newsletters, tournament schedules, match results, draws or scores, rankings, player statistics, instructional and teaching materials all in the field of sport, including golf; providing on-line computer games; provision of entertainment information via television, broadband, wireless and on-line services; television and radio entertainment, namely, distribution of television shows and radio shows relating to golf and other sports; provision and production of television and radio entertainment, namely, programmes and broadcasts relating to sport, including golf or golf tournaments; sporting services, namely, providing information relating to sports and sporting events; production of audio recording; film and video production services; ticket reservation and booking services for sporting events.

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

David I

/DAVID I/

Trademark Attorney

Law Office 114

571-270-1526

david.i@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 November 05, 2019 for

U.S. Trademark Application Serial No. 88238544

 

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. 

 

 

David I

/DAVID I/

Trademark Attorney

Law Office 114

571-270-1526

david.i@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 November 05, 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.”