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:  October 30, 2019

 

THIS IS A FINAL OFFICE ACTION.

 

This letter responds to the incoming response dated October 3, 2019.

 

The requirement for an acceptable identification of goods and services is now made FINAL for the reasons set forth below.  37 C.F.R. §2.63(b).

 

IDENTIFICATION OF GOODS AND SERVICES

 

This requirement applies only to the services specified therein.

 

Despite the amendment, the identification of goods and services continues to be unacceptable and must be clarified because some of the services are still indefinite.  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:

• The services “Facilitating and arranging for the financing and collection of donations for fundraising; facilitating and arranging for the distribution of fundraising donations” are not clear and must be specified.
• The services “Computer services, namely, maintaining online user-defined content and advertisements and maintaining social media feeds” are not clear and must be specified.

 

Applicant may adopt the following wording, if accurate:

 

“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; Downloadable electronic game software; Downloadable virtual reality software; Downloadable video game software; Downloadable software for accessing and viewing text, images and electronic data relating to conferences in the field of software development; 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; Downloadable software for converting natural language into machine-executable commands; Downloadable software, namely, an interpretive interface for facilitating interaction between humans and machines; Downloadable artificial intelligence software namely, machine learning software, visual perception software, speech or language recognition software, decision-making software, translation software, touch recognition software, conversational query software, software for converting natural language into machine-executable commands, and digital assistant software; Downloadable personal assistant software; Downloadable social assistant software; Downloadable software for making reservations and bookings; Downloadable software for ordering and/or purchasing goods and services; Downloadable software for wireless content, data and information delivery; Downloadable software to enable accessing, displaying, editing, linking, sharing and otherwise providing electronic media and information via the internet and communications networks; Downloadable software for facilitating interaction and communication between humans and AI (artificial intelligence) platforms; Downloadable software for facilitating interaction and communication between humans and AI (artificial intelligence) platforms; Downloadable software for facilitating interaction and communication between humans and AI (artificial intelligence) platforms; Downloadable software for processing images, graphics, audio, video, and text; 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; Downloadable software for use in customer relationship management (CRM); Downloadable software for facilitating and arranging for the financing and distribution of fundraising and donations” in International Class 9;

 

“Business and advertising services, namely, providing procurement and consulting services in the fields of media planning and media buying for others; Employment and recruiting services, namely, assisting others in recruiting personnel and finding employment; 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; {further specify the services Facilitating and arranging for the financing and collection of donations for fundraising; facilitating and arranging for the distribution of fundraising donations}; Providing electronic mobile payment services for others involving electronic processing and subsequent transmission of bill payment data; Online charitable fundraising services and procurement of charitable 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; Entertainment and educational services, namely, providing non-downloadable movies, television shows, webcasts, audiovisual, and multimedia works in the fields of music, sports, art, fashion, current events, recreational activities and general interest via the internet, as well as entertainment 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; Providing an application programming interface (API) to allow users to perform electronic business 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; Providing on-line non-downloadable software 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, maintaining online user-defined content and advertisements and maintaining social media feeds}; Providing on-line non-downloadable software for taking photographs and recording audio, audio-visual and video content; Providing temporary use of online, non-downloadable personal assistant software for searching the internet, making appointments and reservations, facilitating purchases, providing customer-specific information to meet individual need including customer-specific reminders; Providing on-line non-downloadable social assistant software for searching the internet, making appointments and reservations, facilitating purchases, providing customer-specific information to meet individual need including customer-specific reminders; 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; Providing an online network environment featuring technology that gives 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; User verification services, namely, providing user authentication of personal identification information using single sign-on technology for online software applications” in International Class 42;

 

“Providing concierge services for others comprising 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 rendered via the internet or communication networks” 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 final office action

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  “Facilitating and arranging for the financing and collection of donations for fundraising; facilitating and arranging for the distribution of fundraising donations; Computer services, namely, maintaining online user-defined content and advertisements and maintaining social media feeds”.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the remaining goods and/or services only. 

 

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)

 

 

 

/Sung In/

Sung In

Trademark Examining Attorney

Law Office 103

Phone: (571) 272-9097

Fax: (571) 272-9103

Email: sung.in@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 October 30, 2019 for

U.S. Trademark Application Serial No. 88272800

 

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. 

 

 

/Sung In/

Sung In

Trademark Examining Attorney

Law Office 103

Phone: (571) 272-9097

Fax: (571) 272-9103

Email: sung.in@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 October 30, 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.”