Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 17, 2019

 

 

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.  

 

 

The referenced application has been further 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. The identifications of goods and services remain indefinite as indicated below.

 

 

INFORMALITY

 

 

Applicant must also respond to the requirement(s) set forth below.

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified because it is too broad. The software must indicate whether it is recorded or non-downloadable. 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.

 

 

Applicant may adopt the following wording, if accurate: 

 

 

“Sound recorded magnetic cards, sheets and tapes; compact discs featuring music; downloadable music files; phonograph records featuring [specify content or subject matter, e.g., music], prerecorded video discs featuring music and recorded video tapes featuring music; electronic sheet music, downloadable; downloadable electronic publications in the nature of books, magazines and brochures in the field of music; computer video game programs; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; downloadable computer software for music-composition using artificial intelligence; Music-composition software, prerecorded or downloadable; prerecorded or downloadable computer software for processing digital music files; recorded computer programs for data processing; prerecorded or downloadable computer software for creating and editing music and sounds; computers; computer memory drives; computer peripheral devices; prerecorded or downloadable computer operating programs recorded; computer operating programs, recorded; computer software, recorded for viewing, organizing, editing, uploading, processing and composing digital music files, music and sounds; prerecorded or downloadable computer software for viewing, organizing, editing, uploading, processing and composing digital music files, music and sound; telecommunication machines and apparatus, namely, digital music players” in International Class 9.

 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

 

 

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified because it is too broad. The use of computer program must be indicated as provided below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording 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.

 

 

Applicant may substitute the following wording, if accurate: 

 

 

“Development and creation of computer programs with artificial intelligence for use in [specify use, e.g., for use in music recording, etc.]; development and creation of computer programs for music composition; development and creation of computer software for processing digital music files; development and creation of computer programs for data processing; development and creation of computer programs for creating and editing music and sounds; computer software design, computer programming, or maintenance of computer software; providing non-downloadable computer programs with artificial intelligence for use in [specify use, e.g., for use in music recording, etc.]; providing non-downloadable computer programs for music composition; providing non-downloadable computer programs for processing digital music files; providing non-downloadable computer programs for data processing; providing non-downloadable computer programs for creating and editing music and sounds; providing computer programs of data networks; software as a service (SAAS) services featuring software for viewing, organizing, editing, uploading, processing and composing digital music files, music and sounds; cloud computing featuring software for viewing, organizing, editing, uploading, processing and composing digital music files, music and sounds” in International Class 42.

 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

 

Note;

 

The stated refusal refers to International Classes 9 and 42 only and does not bar registration in the other classes, i.e., class 38.

 

 

ID MANUAL IS AVAILABLE ONLINE

 

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 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. 

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Zachary  Bello/

Attorney Advisor

Law Office 111

USPTO

571-272-9376

zack.bello@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 August 17, 2019 for

U.S. Trademark Application Serial No. 88281273

 

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. 

 

 

Bello, Zack

/Zachary  Bello/

Attorney Advisor

Law Office 111

USPTO

571-272-9376

zack.bello@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 August 17, 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.”