Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  October 24, 2019

 

 

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Prior-Filed Application

The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.

 

            - U.S. Application Serial No. 87288980

 

Refusal and requirement resolved and maintained and continued.  The following issues have been resolved:

 

            •  Section 2(d) Refusal based on likelihood of confusion with Reg. No. 4939384

            •  Potential Section 2(d) Refusal based on Application Serial No. 88214054

•  Requirement for amended mark description       

 

 

See TMEP §713.02.

 

The following requirement is maintained and continued: 

 

            •  Requirement for acceptable identification of goods/services

             

Identification of Services—International Classes 38 and 42

The proposed amended identification of goods and services in Classes 9, 35, and 39 is acceptable. However, the proposed amended identification in Classes 38 and 42 is unacceptable.

 

Class 38

Particular wording in the proposed amendment to the identification in Class 38 is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the services as follows:  “Broadband radio communication services; Communication via computer terminals, by digital transmission or by satellite; Telematic sending of information; Transmission and delivery of data via broadband/satellite M2M and Wireless Communication Networks.”

 

However, the proposed amendment includes the following services:  “Providing Internet access to downloads of books, magazines, newspapers and digital media on a variety of topics via a web site.” 

 

This portion of the proposed amendment is beyond the scope of the original identification because the original identification did not include any Internet access services.  In addition, Internet access services, or activities encompassing such services, were not listed elsewhere in the application.

 

Moreover, this wording is unacceptable as indefinite.  “Providing internet access” in Class 38 refers to the telecommunication activity of providing access to the Internet.  “Providing access” to downloadable publications is not a telecommunications service but only indicates that certain materials are made available for download.

 

Class 42

The wording “electronic monitoring and reporting of persons, materials, and equipment using computers or sensors” is unacceptable as indefinite.  The applicant must further specify the “materials and equipment” that is monitored and reported, and must clarify the nature of the monitoring and reporting services as they relate to persons, as the nature of those services is unclear.

 

The applicant may amend to adopt one or both of the following identifications, if accurate:

 

INTERNATIONAL CLASS 38:  Electronic delivery of electronic library books and electronic books; electronic delivery of books, magazines, newspapers and digital media.

 

INTERNATIONAL CLASS 42:  Electronic data storage; electronic monitoring and reporting of [further specify subject/purpose of monitoring and reporting services; e.g., vehicles, trailers, drivers, and cargo in transit; industrial assets] using computers or sensors.

 

See id.  The identification requirement will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(571) 272-9430

kimberly.frye@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 24, 2019 for

U.S. Trademark Application Serial No. 88278053

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(571) 272-9430

kimberly.frye@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).

 

 

 

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.”