To: | Target Brands, Inc. (us.trademarks@target.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88312301 - ROUNDEL - 201900118 |
Sent: | 4/24/2019 9:17:14 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88312301
MARK: ROUNDEL
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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: Target Brands, Inc.
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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: 4/24/2019
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:
Search Results:
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Informal Issues:
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may replace such wording with the following, if appropriate: “wireless networking systems.”
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 considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
Please note: In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font. Applicant may adopt the following identification of goods and services, if accurate:
Class 09: “Computer hardware and recorded software for combining text, video signals, and/or audio signals from mobile communications devices, cable feeds, satellite feeds, or terrestrial feeds for the display of localized video and/or audio advertisements onto video and/or audio output devices, namely, televisions, flat panels, digital signs, radios, intercoms, paging systems, public announcement systems, telephone systems, speakers, mobile communications devices, or other video and/or audio output devices for the marketing of goods and services to consumers; computer hardware and recorded software for incorporating advertisements onto splash screens, pop-up windows, and browser windows of computers accessing wireless networking systems; recorded or downloadable computer software for planning, scheduling, downloading, and managing localized video and/or audio advertisements onto video and/or audio output devices, namely, televisions, flat panels, digital signs, radios, intercoms, paging systems, public announcement systems, telephone systems, speakers, mobile communications devices, or other video and/or audio output devices; recorded or downloadable software and mobile application software for tracking, managing, and optimizing advertising and promotional campaigns, and calculating return on investment in connection with the same, for tracking website traffic, e-commerce activity, customer loyalty, and sales conversion rates” and
Class 35: “Advertising and marketing consultancy; advertising, marketing and promotion services; advertising and marketing services, namely, promoting the goods and services of others; market analysis; market research and market intelligence services; consumer strategy business consulting in the fields of marketing and sales specializing in the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions; sales promotion for the goods and services of others; promoting the sale of goods and services of others through electronic couponing, promotions and discounts; marketing and consulting services in the field of promoting and tracking the goods, services, and brands of others through all public communication means; consultation services, namely, creative and strategic consultation regarding development and production of marketing campaigns for others; marketing consulting, namely, tracking and reporting online, digital and omni channel marketing activities of others; creative marketing design services; business consultation, namely, consultation in the areas of customer engagement, experience, motivation, and loyalty; consulting services in the field of internet marketing; advertising via electronic media and specifically the internet; dissemination of advertising for others via an online communications network on the internet; online advertising on a computer network; online advertising and promotional services; online advertising network matching services for connecting advertisers to websites; promoting the goods and services of others via a global computer network; promoting the sale of the goods and services of others through customer loyalty and incentive programs for retail customers; retail department store services; online retail department store services; retail grocery store services” and
Class 38: “Communication services, namely, transmitting advertising videos played online and on television monitors in retail stores; narrowcasting in the nature of streaming advertising video material on the internet and via in-store television networks; electronic transmission of content, namely, electronic transmission of graphics, pictures, text, audio, music, and video for advertising purposes via global computer networks, broadcast networks, and mobile communications devices” and
Class 41: “Education and training services, namely, providing courses, online courses and certificate programs in the field of digital advertising and marketing” and
Class 42: “Platform as a service (PAAS) featuring computer software platform for placing advertisements and tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; providing online non-downloadable software for tracking, managing, and optimizing advertising and promotional campaigns, and calculating return on investment in connection with the same; providing online non-downloadable software for tracking website traffic, e-commerce activity, customer loyalty, and sales conversion rates; providing online non-downloadable software for optimizing website navigation; providing online non-downloadable software for managing, collecting, monitoring and analyzing web, blog and other online site traffic, user preferences and links; providing an interactive website featuring technology for placing advertisements and tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; customer computer technology support services, namely, help desk services; data mining”
PTO Online Searching Manual:
For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please also note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
Responding to Office Action:
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.
If applicant has a question or amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to email or telephone the examining attorney to expedite the processing of the application.
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.
/Dominic Fathy/
Trademark Examining Attorney
Law Office 104
(571) 272-8801
dominic.fathy@usp
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.