To: | Kiterra, LLC (peter.riebling@rieblinglaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88288825 - ISTORY - 000290-00002 |
Sent: | 4/17/2019 9:25:58 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88288825
MARK: ISTORY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Kiterra, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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:4/17/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a characteristic of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
According to the attached evidence, the letter “i” or “I” used as a prefix would be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products or services. Specifically, the evidence consists of webpages from Wikipedia, Wiktionary, and Tech Times, establishing that “i-” is a prefix meaning Internet.
When a mark consists of this prefix coupled with a descriptive word or term for Internet-related goods or services, then the entire mark may be considered merely descriptive. See RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1810-14 (TTAB 2018) (holding IPAD merely descriptive of web-based software for mobile-access database management in which users can store and access their personal information); In re Zanova, Inc., 59 USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others); TMEP §1209.03(d).
In this case, the mark consists of the prefix “I-” before the descriptive wording STORY. Specifically, attached evidence from American Heritage dictionary establishes that STORY means “an account or recital of an event or a series of events, either true or fictitious.” When viewed together, the term ISTORY conveys the impression that the provided services are used to tell an account or recital of an event over the Internet. Furthermore, the applicant’s services are the provision of non-downloadable software for modifying and transmitting different forms of data including text and audio-visual content, and software for blogging and journaling, all of which are common ways of providing or telling stories over the internet.
Additionally, attached website evidence from Narrative, Indiegogo, Mactrast, Vietnam Talking Points, MethodShop, VisualEyes, and iMuallim, further establish that the term ISTORY is commonly used to refer to stories that are told over the internet, or to refer to devices and services related to stories to be told over the internet. This evidence establishes that consumers have seen this wording in relation to internet products and services and would be aware of its meaning.
Therefore, the mark ISTORY, as applied to the identified services, merely describes a characteristic of applicant’s services, namely, that their software is for use in story telling over the internet. Accordingly, the proposed mark is merely descriptive and registration is refused under Section 2(e)(1).
REQUEST FOR INFORMATION REQUIREMENT
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the services is available on applicant’s website is insufficient to make the information of record;
(2) If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ. If the services feature new technology and information regarding competing services is not available, applicant must provide a detailed factual description of the services. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions:
a. Are the applicant’s services used to modify, create, transmit, distribute, or tell stories?
b. Are the applicant’s services in any way related to stories?
c. What impression does the applicant hope to convey with the wording STORY in the mark?
d. Do the applicant’s competitors use the term “ISTORY,” and/or “STORY,” or similar wording to advertise similar services?
e. Who is the typical consumer of applicant’s services?
f. Where are the applicant’s services typically purchased?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
IDENTIFICATION OF SERVICES REQUIREMENT
The identification of goods contains indefinite wording that requires clarification, as outlined below.
Applicant should also note the additional necessary specifications included in the suggested identification below.
Applicant may adopt the following wording, if accurate (suggested edits in bold):
Class 042: Non-downloadable computer software for modifying the appearance and enabling transmission, sharing and distribution of photographs, text,
messages, digital files, electronic files, data, information, graphics, images, audio, videos, audio-visual content, audio-visual files, electronic media and other [applicant to specify the type of other content, e.g. multimedia, etc.] content; Non-downloadable computer software for the creating, collection, editing, organizing, managing,
modifying, collaborating, transmission, distribution, storage, and sharing of photographs, text, messages, digital files, electronic files, data, information, graphics, images, audio, videos,
audio-visual content, audio-visual files, electronic media and other [applicant to specify the type of other content, e.g. multimedia, etc.] content;
Non-downloadable computer software for use as an application programming interface (API); Non-downloadable computer software in the nature of an application programming interface (API) which
facilitates online services for social networking, building social networking applications, and for allowing data and information retrieval, upload, download, access and management of photographs,
text, messages, digital files, electronic files, data, information, graphics, images, audio, videos, audio-visual content, audio-visual files, electronic media and other [applicant to specify the type of other content, e.g. multimedia, etc.] content; Non-downloadable computer software to enable uploading, downloading,
accessing, posting, displaying, tagging, blogging, streaming, journaling, linking, sharing or otherwise providing photographs, text, messages, digital files, electronic files, data, information,
graphics, images, audio, videos, audio-visual content, audio-visual files, electronic media, and other [applicant to specify the type of other content, e.g.
multimedia, etc.] content via computer and communication devices and networks; Providing a website featuring technology that enables users to
upload photographs, text, messages, digital files, electronic files, data, information, graphics, images, audio, videos, audio-visual content, audio-visual files, electronic media and other [applicant to specify the type of other content, e.g. multimedia, etc.] content; File sharing services, namely, providing a website
featuring technology enabling users to upload photographs, text, messages, digital files, electronic files, data, information, graphics, images, audio, videos, audio-visual content, audio-visual
files, electronic media and other [applicant to specify the type of other content, e.g. multimedia, etc.] content; Providing a website featuring technology
that enables online users to create personal profiles featuring social networking information; Technical support services, namely, providing help desk services in the field of computer software,
namely, providing users with instructions and advice on the use of computer software, provided online and via e-mail; Computer services, namely, providing an interactive website featuring technology
that allows users to manage their online photographs, text, messages, digital files, electronic files, data, information, graphics, images, audio, videos, audio-visual content, audio-visual files,
electronic media, other [applicant to specify the type of other content, e.g. multimedia, etc.] content, and social networking accounts; Electronic data
storage
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
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
/Lyal Fox/
Lyal Fox
Trademark Examining Attorney
Law Office 113
571-270-7884
lyal.fox@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.