To: | INTERNATIONAL DATA GROUP, INC. (trademark_docket@idg.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88255543 - IDG 189-001 |
Sent: | 3/19/2019 4:13:25 PM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88255543
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: INTERNATIONAL DATA GROUP, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/19/2019
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 OF OFFICE’S DATABASE OF MARKS
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).
AMENDED IDENTIFICATION OF GOODS AND SERVICES
The wording “online services” in the identification of services is indefinite and must be clarified because it is not sufficiently clear what services that is referring to, e.g., online cloud computing services, or online retail store services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Similarly, the wording “promoting the goods and services of others with product and service reviews” and “promoting the goods and services of others, namely, providing reviews and recommendations on products and services in the field of” in the identification of services is indefinite and must be clarified because it is not sufficiently clear what services that is referring to or the means of delivering such service, such as advertising services, namely, promoting the goods and services of others with product and service reviews, or promoting the goods and services of others by providing a website featuring product and service reviews. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Likewise, the wording “promoting the goods and services of others and product recognition in the field of . . . ” in the identification of services is indefinite and must be clarified because it is not sufficiently clear what means of promotion are included, such as “by means of contests and incentive award programs,” “by means of word-of-mouth and nontraditional marketing programs,” or “by means of providing online coupons,” or, alternatively, these services could be “advertising services, namely, promoting the goods and services of others in the nature of product recognition . . . . .” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Additionally, the wording “product recognition of excellence for product and services in the field of. . . ” in the identification of services is indefinite and must be clarified because it is not sufficiently clear whether this is an advertising service or an awards program service. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may substitute the following wording, if accurate (suggestions in BOLD, deletions in BOLD
STRIKETHROUGH):
CLASS 009: electronic downloadable publications, namely, newsletters, magazines and supplements sold therewith, and journals in the fields of computers, computer software, online cloud computing services, high technology, communications, information technology, information services, mobile devices, telecommunications, interactive entertainment, consumer electronics, home theatre equipment, photographic equipment, video equipment, audio equipment, mobile applications, portable electronic devices, social media and video games
CLASS 035: advertising services, namely, promoting the goods and services of others with product and
service reviews; advertising services, namely, promoting the goods and services of others and in the nature of product
recognition in the field of computers, computing, computer software, computer hardware, computer security, data storage, cloud computing, data security, servers, online cloud
computing services, high technology, communications, information technology, information services, mobile devices, telecommunications, interactive entertainment, consumer electronics, consumer
technology, home theater equipment, photographic equipment, video equipment, audio equipment, mobile applications, portable electronic devices, social media, video games, computer accessories, apps,
smartphones, smartwatches, tablets, wearables, fitness trackers, wi-fi wireless internet adapters, networking, gadgets, smart home, streaming media,
internet of things, health technology, adapters, hubs, virtual reality, and emerging technology; advertising services in the nature of promoting the goods and services of
others, namely, providing reviews and recommendations on products and services in the field of computers, computing, computer software, computer hardware, computer security, data storage, cloud
computing, data security, servers, online cloud computing services, high technology, communications, information technology, information services, mobile devices,
telecommunications, interactive entertainment, consumer electronics, consumer technology, home theater equipment, photographic equipment, video equipment, audio equipment, mobile applications,
portable electronic devices, social media, video games, computer accessories, apps, smartphones, smartwatches, tablets, wearables, fitness trackers, wi-fi wireless internet adapters, networking, gadgets, smart home, streaming media, internet of things, health technology, adapters, hubs, virtual reality, and emerging technology
CLASS 041: providing online non-downloadable publications, namely, newsletters, magazines and supplements sold therewith, and
journals all featuring information in the fields of computers, computer software, online cloud computing services, high technology, communications, information technology,
information services, mobile devices, telecommunications, interactive entertainment, consumer electronics, home theatre equipment, photographic equipment, video equipment, audio equipment, mobile
applications, portable electronic devices, social media and video games; awards program in recognition of excellence for product and services in the field of computers, computing, computer software,
computer hardware, computer security, data storage, cloud computing, data security, servers, online cloud computing services, high technology, communications, information
technology, information services, mobile devices, telecommunications, interactive entertainment, consumer electronics, consumer technology, home theater equipment, photographic equipment, video
equipment, audio equipment, mobile applications, portable electronic devices, social media, video games, computer accessories, apps, smartphones, smartwatches, tablets, wearables, fitness trackers,
wi-fi wireless internet adapters, networking, gadgets, smart home, streaming media, internet of things, health technology, adapters, hubs, virtual
reality and emerging technology; awards program in the nature of product recognition of excellence for product and services in the field of computers, computing, computer
software, computer hardware, computer security, data storage, cloud computing, data security, servers, online cloud computing services, high technology, communications,
information technology, information services, mobile devices, telecommunications, interactive entertainment, consumer electronics, consumer technology, home theater equipment, photographic equipment,
video equipment, audio equipment, mobile applications, portable electronic devices, social media, video games, computer accessories, apps, smartphones, smartwatches, tablets, wearables, fitness
trackers, wi-fi wireless internet adapters, networking, gadgets, smart home, streaming media, internet of things, health technology, adapters, hubs,
virtual reality, and emerging technology; providing recognition and incentives by the way of awards to demonstrate excellence in the field of computers, computing, computer
software, computer hardware, computer security, data storage, cloud computing, data security, servers, online cloud computing services, high technology, communications,
information technology, information services, mobile devices, telecommunications, interactive entertainment, consumer electronics, consumer technology, home theater equipment, photographic equipment,
video equipment, audio equipment, mobile applications, portable electronic devices, social media, video games, computer accessories, apps, smartphones, smartwatches, tablets, wearables, fitness
trackers, wi-fi wireless internet adapters, networking, gadgets, smart home, streaming media, internet of things, health technology, adapters, hubs,
virtual reality, and emerging technology
CLASS 042: providing a website featuring technology and technological information in the fields of computers, computer software, technology related to the provision of online cloud computing services, high technology, technology related to the provision of communications, information technology, technology related to the provision of information services, mobile devices, technology related to the provision of telecommunications, technology related to the provision of interactive entertainment, consumer electronics, home theatre equipment, photographic equipment, video equipment, audio equipment, mobile applications, portable electronic devices, social media and video games; product testing
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.
Applicant should note the following additional requirement.
SUBSTITUTE SPECIMEN REQUIREMENT
PARTIAL REQUIREMENT AS TO CLASS 009
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 009 in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, although there is a field to “register” for the eBook, such does not necessarily indicate that these are downloadable eBooks – registering your email could just as easily place you on a “pre-order” list, or result in an email being sent with the eBook and or a link to view the eBook online, the latter two being services classified in International Class 041, such as “Providing online newsletters in the field of {indicate subject matter or field} via e-mail,” from the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. Therefore, there is no acceptable specimen showing the mark in association with electronic downloadable publications, namely, newsletters, magazines and supplements sold therewith, and journals.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order or download the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(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.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Respond online to this letter. Use the TEAS “Response to Office Action” online form to file a response
If Applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
For attorney referral information, Applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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.
/Benjamin Roth/
Examining Attorney
Law Office 122
(571) 272-5266
Benjamin.roth@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.