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: 4/8/2019

 

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, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

However, applicant must address the following issue(s).

 

IDENTIFICATION OF GOODS AND SERVICES

 

This requirement applies only to the goods and/or services specified therein.

 

The identification of goods and services is not acceptable and must be clarified because several of the goods and services are indefinite and could include goods and services in other classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Further, applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Specifically:

·       Throughout the application, applicant must specify whether the software goods are recorded or downloadable.

·       The goods “virtual reality software; artificial intelligence software” must be amended to specify the purpose or function of the software.

·       The services “Business and advertising services, namely, media planning and media buying for other; Employment and recruiting services” are not clear and must be specified.

·       The services “Providing online computer databases and online searchable databases in the field of classifieds” must be amended to specify the field of the databases.

·       The services “facilitating and arranging for the distribution of fundraising and donations” must be further specified.

·       The services “Providing electronic mobile payment services for others” must be further specified.

·       The services “financial donations services” are not clear and must be further specified.

·       The services “Providing information about electronic, video or interactive multimedia games via the internet or communications networks” are duplicative and repeated.

·       The services “Entertainment and educational services, namely, providing non-downloadable movies, television shows, webcasts, audiovisual, and multimedia works via the internet, as well as information, reviews, and recommendations regarding movies, television shows, webcasts, audiovisual, and multimedia works” must be further specified.

·       The services “Providing an application programming interface (API) to allow users to perform electronic business monetary transactions via the internet” are not clear and must be further specified.

·       Throughout the application, the services “providing software” should specify that the software is on-line and non-downloadable.

·       The services “Providing for organizing images, video, and audio-visual content using metadata tags; Computer services, namely, curating online user-defined content and advertisements and creating social media feeds” are indefinite and must be specified.

·       Applicant must further specify the function of the “personal assistant software; social assistant software” and indicate that these are services, e.g., providing on-line non-downloadable personal assistant software for [specify function or purpose of the software].

·       Throughout the application, the services “Providing online facilities” are not clear and must be further specified.

·       The services “Providing concierge services for others, namely, booking reservations, facilitating purchases, arranging deliveries, making requested personal arrangements, providing recommendations on products and services, providing customer-specific information to meet individual needs, and provision of electronic reminders and notifications” are not clear and could include services in other classes.

·       The services “user verification services” are indefinite and must be further specified.

 

Applicant may adopt the following wording, if accurate:

 

“{specify whether the software goods are recorded or downloadable software for modifying photographs, images and audio, video, and audio-visual content with filters; Ad server, namely, a computer server for storing advertisements and delivering advertisements to websites; {specify, e.g., downloadable}  electronic game software; {specify, e.g., downloadable} virtual reality software for {specify purpose or function of the software}; {specify, e.g., downloadable} video game software; {specify, e.g., downloadable} software for accessing and viewing text, images and electronic data relating to conferences in the field of software development; {specify, e.g., downloadable} software to enable development, assessment, testing, and maintenance of mobile software applications for portable electronic communication devices, namely, mobile phones, smartphones, handheld computers and computer tablets; {specify, e.g., downloadable} software for converting natural language into machine-executable commands; {specify, e.g., downloadable} software, namely, an interpretive interface for facilitating interaction between humans and machines; {specify, e.g., downloadable} artificial intelligence software for {specify purpose or function of the software}; {specify, e.g., downloadable} personal assistant software; {specify, e.g., downloadable} social assistant software; {specify, e.g., downloadable} software for making reservations and bookings; {specify, e.g., downloadable} software for ordering and/or purchasing goods and services; {specify, e.g., downloadable} software for wireless content, data and information delivery; {specify, e.g., downloadable} software to enable accessing, displaying, editing, linking, sharing and otherwise providing electronic media and information via the internet and communications networks; {specify, e.g., downloadable} software for facilitating interaction and communication between humans and AI (artificial intelligence) platforms; {specify, e.g., downloadable} software for facilitating interaction and communication between humans and AI (artificial intelligence) platforms; {specify, e.g., downloadable} software for facilitating interaction and communication between humans and AI (artificial intelligence) platforms; {specify, e.g., downloadable} software for processing images, graphics, audio, video, and text; {specify, e.g., downloadable} software for managing social networking content, interacting with a virtual community, and transmission of images, audio, audio-visual and video content, photographs, videos, data, text, messages, comments, advertisements, media advertising communications and information; {specify, e.g., downloadable} software for use in customer relationship management (CRM); {specify, e.g., downloadable} software for facilitating and arranging for the financing and distribution of fundraising and donations” in International Class 9;

 

“Business and advertising services, namely, {specify media planning and media buying for others, e.g., providing consulting services in the field of facilitating the planning, buying, and selling of media}; {specify Employment and recruiting services, e.g., employment recruiting services}; Providing online computer databases and online searchable databases in the field of classified advertisements; Customer relationship management” in International Class 35;

 

“Credit card, debit card, and gift card transaction processing services; Merchant services, namely, payment transaction processing services; Facilitating and arranging for the financing of fundraising and donations; {further specify the services facilitating and arranging for the distribution of fundraising and donations}; Providing electronic mobile payment services for others involving electronic processing and subsequent transmission of bill payment data; Online charitable fundraising services and {further specify the services financial donation services}” in International Class 36;

 

“Peer-to-peer photo and data sharing services, namely, electronic transmission of digital photo files, graphics and audio content among internet users; Voice over internet protocol (VOIP) services; Telephony communication services; Telecommunications and peer-to-peer network computer services, namely, electronic transmission of images, audio-visual and video content, photographs, videos, data, text, messages, advertisements, media advertising communications and information; Teleconferencing; Telecommunication services, namely, data transmission and reception services via telecommunication networks; Electronic exchange of voice, data, audio, video, text and graphics accessible via the internet and telecommunications networks” in International Class 38;

 

“Providing information about electronic, video or interactive multimedia games via the internet or communications networks; Publishing services, namely, publishing of electronic publications for others; {further specify Entertainment and educational services, namely, providing non-downloadable movies, television shows, webcasts, audiovisual, and multimedia works via the internet, as well as information, reviews, and recommendations regarding movies, television shows, webcasts, audiovisual, and multimedia works}” in International Class 41;

 

“Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, and transmitting, and sharing or otherwise providing electronic media or information via the internet and communications networks; {further specify Providing an application programming interface (API) to allow users to perform electronic business monetary transactions via the internet}; Design and development of computer software; Providing on-line non-downloadable software for use in designing, managing, measuring, analyzing, disseminating, and serving advertising of others; Online ad-buying platform provider, namely, providing on-line non-downloadable software programs for allowing buyers and sellers of online advertising to purchase and sell advertising inventory; Providing user authentication services using single sign-on and software technology for e-commerce transactions; Platform as a service (PAAS) services featuring software to allow users to perform business and e-commerce transactions; Mapping services; Application service provider (ASP) featuring software for mapping services; Providing on-line non-downloadable software for making reservations and bookings; Application service provider (ASP) featuring software to enable or facilitate making reservations and bookings; Providing on-line non-downloadable software for ordering and/or purchasing goods and services; Application service provider (ASP) featuring software to enable or facilitate ordering and/or purchasing goods and services; Providing on-line non-downloadable software for facilitating interaction and communication between humans and AI (artificial intelligence) platforms; Application service provider (ASP) featuring software to enable or facilitate interaction and communication between humans and AI (artificial intelligence) platforms; Providing on-line non-downloadable software for modifying photographs, images and audio, video, and audio-video content with filters; Providing on-line non-downloadable software for finding content and content publishers, and for subscribing to content; {further specify Providing for organizing images, video, and audio-visual content using metadata tags}; Application service provider (ASP) featuring application programming interface (API) software which facilitates online services for social networking, developing software applications; {further specify Computer services, namely, curating online user-defined content and advertisements and creating social media feeds}; Providing on-line non-downloadable software for taking photographs and recording audio, audio-visual and video content; providing on-line non-downloadable personal assistant software for {specify purpose of function of software}; providing on-line non-downloadable social assistant software for {specify purpose of function of software}; Application service provider (ASP) services featuring software to enable or facilitate voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, electronic message, instant message, and online social networking services; Providing on-line non-downloadable software for use in taking and editing photographs and recording and editing videos; Application service provider (ASP) featuring software to enable or facilitate taking and editing photographs and recording and editing videos; {further specify Providing online facilities, e.g., providing website} that give users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing on-line non-downloadable software and applications for customer relationship management (CRM); Application service provider (ASP) featuring software for customer relationship management (CRM); Computer services, namely, application service provider featuring application programming interface (API) software for customer relationship management (CRM); Hosting of digital content on the internet; Providing on-line non-downloadable software for facilitating and arranging for the financing and distribution of fundraising and donations” in International Class 42; and

 

“{further specify Providing concierge services for others, namely, booking reservations, facilitating purchases, arranging deliveries, making requested personal arrangements, providing recommendations on products and services, providing customer-specific information to meet individual needs, and provision of electronic reminders and notifications, as some of the tasks fall in other international classes, e.g., Personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes}; {further specify User verification services; if these services are electronic signature verification services using technology to authenticate user identity, then they belong in Class 42}” in International Class 45.

 

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’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).

 

Failure to properly respond to partial office action

 

If applicant does not respond to this Office action within the six-month period for response, the goods and/or services in International Classes 9, 35, 36, 41, 42 and 45 to which the requirement applies, and marked in bold above, will be deleted from the application.  The application will then proceed with the remaining goods and/or services in International Classes 9, 35, 36, 38, 41, 42 and 45.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.  

 

 

 

/Sung In/

Sung In

Trademark Examining Attorney

Law Office 103

Phone: (571) 272-9097

Fax: (571) 272-9103

Email: sung.in@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 4/8/2019 FOR U.S. APPLICATION SERIAL NO. 88272800

 

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 4/8/2019 (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.