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: 4/9/2019

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

1. Requirement for clarification of the color claim and mark description.
2. Requirement for clarification of the identification of goods and services.
3. Requirement for compliance with the multiple-classification requirements.

 

Please also note that a prior-filed, pending application has been cited as a potential bar to registration.

 

Search – Prior-filed, Pending Application

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 87459644 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

However, applicant must respond to the following refusal(s) and/or requirement(s).

 

1)  Mark Description and Color Claim

 

When an applicant submits a color drawing, the applicant must provide (1) a list of all the colors claimed as a feature of the mark and (2) a description of all the literal and design elements that specifies where each color appears in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

In this case, applicant must more specifically describe the mark and where the colors appear in the mark.  It must be particularly clear if the white in the background is a feature of the mark.

 

Applicant also must clarify the names of the colors in the mark.  The color claim, drawing, and mark description must be consistent.  Here, “crimson” is used in the color claim whereas “red” is used in the mark description.  “Red” appears to be the more accurate and generic term. 

 

In light of the foregoing, the following color claim and description are suggested, if appropriate:

 

            Color Claim:  The colors white and red are claimed as a feature of the mark.

 

Description:  The mark consists of a white stylized letter “d” with a red circular center.  The “d” is outlined in red.  The remainder of the white in the drawing represents background areas only and is not part of the mark.

 

See TMEP §807.07(b).

 

2)  Identification of Goods/Services

 

Some of the wording in the identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant also must adopt the appropriate international classification number for the goods and/or services identified in the application.  The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services.  See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

As a preliminary matter, please note that, generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification.  Id. 

 

Here, the use of “GPS” is parentheses is acceptable.  However, the other parentheses in the identification should be removed and the wording therein clarified and incorporated into the identification.

 

The discussion below regarding the identification will include instructions to delete some of the parentheses in the identification.  Please also note that any brackets included in the examining attorney’s suggested identification below merely contain instructions or guidance for applicant.  No brackets should remain in the final identification.

 

“Downloadable animation” must be amended to clarify the nature of the “animation,” e.g., “animation audio and video files,” “animation motion pictures.”

 

For grammatical purposes, “for mobile phone” in “downloadable ring tones for mobile phone” must be amended to “for mobile phones.”  For grammatical purposes “for use global” in the wording “downloadable operating software in the nature of a mobile application for use global positioning systems (GPS) and communication networks” must be clarified by inserting “in” between “use” and “global.”

 

Applicant also remove the parentheses in the following wording and clarify the wording in “computer game programs (software).”  Applicant also must clarify the wording because the wording does not make clear the nature of the software and could identify goods and/or services in at least two international classes – as a product in International Class 9 or a service in International Class 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Computer game software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, providing on-line non-downloadable game software is considered a computer service in International Class 41 (note that other types of online nondownloadable software are classified in Class 42).  See TMEP §§1402.03(d), 1402.11(a)(xii).  Thus, applicant must clarify the nature of and properly classify the software.

 

“Computer e-commerce software for facilitating commercial transaction” must be amended for grammatical purposes by changing “transaction” to “transactions.”  The nature of the software also must be clarified.  As noted above, computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is generally considered a computer service in International Class 42 (when it is not game software).  See TMEP §§1402.03(d), 1402.11(a)(xii).  Thus, applicant must clarify the nature of and properly classify the software.

 

Applicant must clarify the nature of the following software items as it is unclear if they are recorded, downloadable or nondownloadable and provided online: computer application software for disseminating advertising for others; computer application software for facilitating payment transactions by electronic means.

 

Applicant must clarify the nature of and the function(s) of the following software:  computer application software for social networking services via internet; computer software for the identification and authentication; computer firmware.

 

“Encoded magnetic cards” is indefinite and must be clarified.  It is not a known item (like a gift card) and/or could encompass a variety of different cards, e.g., “gift cards” or “pre-paid telephone cards” with different customers and trade channels so the applicant should state the feature or use of the card. 

 

“Credit cards (encoded)” must be amended to remove the parentheses and clarify the nature of the encoded credit cards, e.g., “magnetically encoded credit cards.”  Applicant must similarly clarify the nature of the “identity cards (encoded).”

 

“Smart card (integrated circuit cards) reader and writer” must be amended to delete the parentheses and clarify the wording therein.  The nature of the “writer” also must be clarified.

 

The nature of the following also must be clarified: magnetic payment cards; payment terminals, money dispensing and sorting devices; credit card terminals.

 

Applicant may substitute the following wording, if accurate.

 

Downloadable animation audio and video files, ring tones, music, electronic games, and image files in the field of automobiles, cats and dogs and sports for mobile phones; Downloadable databases in the field of payment processing and marketing; Computer operating programs, recorded; Downloadable ring tones for mobile phones; Consumer coupons downloaded from a global computer network; Downloadable computer game software programs; Recorded computer game software programs; Downloadable operating software in the nature of a mobile application for use in global positioning systems (GPS) and communication networks; Recorded computer application software for disseminating advertising for others; Downloadable computer application software for use in conducting social networking services via internet; Recorded computer application software for facilitating payment transactions by electronic means; Recorded computer software for the identification and authentication of __________ [specify what is identified or authenticated, e.g., personal identification numbers]; recorded computer firmware for use in ______________ [specify function and, if the software is field-specific, then specify the field, e.g., for use in database management in the medical field]; Recorded computer e-commerce software for facilitating commercial transactions; Computer operating systems; Encoded magnetic cards, namely, ___________ [specify type of cards, e.g., magnetically encoded key cards, magnetically encoded credit cards]; Magnetically encoded credit cards; Encoded identity cards, namely, magnetic identifying cards; Magnetic payment cards, namely, magnetically encoded credit cards; Electronic payment terminals; Money dispensing and sorting devices, namely, ________ [specify common commercial name, e.g., automatic teller machines (ATMs)]; Credit card terminals, namely, ________ [specify common commercial name, e.g.,  electronic machines for reading credit cards and recording credit card financial transactions]; Smart card reader-writers, namely, smart integrated circuit card readers that are also encoders for encoding the smart integrated circuit cards, in Class 9.

 

Providing online non-downloadable computer game software, in Class 41.

 

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).

 

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.

 

3)  Multiple-classification Requirements

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Advisory

 

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.  

 

Please do not hesitate to contact the undersigned with any questions.

 

/MaureenDallLott/

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

United States Patent and Trademark Office

571-272-9714

maureen.lott@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 4/9/2019 FOR U.S. APPLICATION SERIAL NO. 88303744

 

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 4/9/2019 (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.