To: | Shutterstock, Inc. (trademarks@shutterstock.com) |
Subject: | U.S. Trademark Application Serial No. 88257313 - IT'S NOT STOCK IT'S SHUTTERSTOCK - N/A |
Sent: | October 30, 2019 10:17:30 AM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88257313
Mark: IT'S NOT STOCK IT'S SHUTTERSTOCK
|
|
Correspondence Address:
|
|
Applicant: Shutterstock, Inc.
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: October 30, 2019
This new Non-Final Office action is in response to applicant’s communication filed on September 9, 2019.
In a previous Office action dated March 25, 2019, the originally assigned trademark managing attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified services with respect to both the differences between the mark in the drawing and the specimen, and that the identification served as an activity and not a services based on the specimen.
Applicant responded on September 9, 2019, by amending the identification of services, which creates a new issue.
The trademark examining attorney maintains and now maintains and continues the refusals, and holds these refusals in abeyance until applicant addresses the new issue in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES that applicant must address:
NEW ISSUE: IDENTIFICATION OF SERVICES AMENDMENT OUT OF SCOPE
In this case, the application originally identified the services as follows: “Providing advertising, marketing and promotional services, namely, development of advertising campaigns for commercial licensing of digital photographs, images and illustrations”.
However, the proposed amendment identifies the following goods and/or services: “Licensing of intellectual property, namely, reproduction rights for images, photographs, stock photographs, archival photographs, art reproductions, film, video, animation, graphic designs, clip art, news images, audio data and illustrations; licensing of images, photographs, stock photographs, archival photographs, art reproductions, film, video, animation, graphic designs, clip art, news images, audio data and illustrations to others via computer networks and global communications networks; licensing of films, video, visual content and audiovisual content for others; all of the foregoing for use in the fields of electronic and print publishing, graphic design, advertising, product packaging, multimedia, film, television and live performances”.
This proposed amendment is beyond the scope of the original identification because the amended identification is not for any type of “advertising, marketing [or] promotional service[]” of any kind. Rather, applicant’s amended services are of a legal nature, i.e., the licensing of intellectual property rights. Even though applicant’s includes that one field of use is for “advertising,” this does not make applicant’s services “advertising services” within the scope of the original identification.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE OPTIONS
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
/Justin Berlin/
Justin Berlin
Trademark Examining Attorney
Law Office 125
(571) 272-5544
justin.berlin@uspto.gov
RESPONSE GUIDANCE