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: 5/14/2019

 

PARTIAL REQUIREMENT

 

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.

 

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:

• Identification and Classification of Goods and Services

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The wording “Computer and electronic game programs”, “computer software development tools; desktop publishing software; software for text, image and sound transmission, editing and display used in the publishing industry; game software; software in the nature of drivers and firmware for operating computers, tablets and digital devices; software for accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media” in the identification of goods is indefinite and must be clarified because the downloadable nature of the software must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “mice” in the identification of goods is indefinite and must be clarified because the computer nature of the mice must be specified.  Id.

 

The wording “wires” in the identification of goods is indefinite and must be clarified because the nature of the wires must be specified.  Id.

 

The wording “cable adapters” in the identification of goods is indefinite and must be clarified because the electric nature of the adapters must be specified.  Id.

 

The wording “printers” in the identification of goods is indefinite and must be clarified because the nature of the printers must be specified.  Id.

 

The wording “remote controls” in the identification of goods is indefinite and must be clarified because the device the controls are for must be specified.  Id.

 

The wording “headsets” in the identification of goods is indefinite and must be clarified because the nature of the headsets must be specified.  Id.

 

The wording “speakers” in the identification of goods is indefinite and must be clarified because the audio nature of the speakers must be specified.  Id.

 

The wording “cases, covers, holders, privacy display screen protectors, protective screens and stands” in the identification of goods is indefinite and must be clarified because the device the goods apply to must be specified.  Id.

 

The wording “telecommunication services, namely, online chat rooms” and “computer services, namely, creating online and virtual communities for users to participate in discussions, obtain feedback, form virtual communities, and engage in social networking” in the identification of services is indefinite and must be clarified because the field or subject matter of must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant has included the term “and/or” or “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear if the applicant intends to use the mark on all the identified goods.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Applicant has classified “downloading … text, images, audio, video, data, webcasts and podcasts via telecommunications networks, wireless communications networks, and the Internet” in International Class 038; however, the proper classification is International Class 009.  Therefore applicant classify the goods in International Class 009.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant may substitute the following wording, if accurate (suggested changes in bold): 

 

Class 009: Downloadable Computer and electronic game programs; audio, visual and audiovisual works in the nature of digitally recorded music files prerecorded on compact discs and downloadable via the Internet; motion picture films featuring comedy, drama, animation, action, horror, fantasy, family, fiction and documentaries prerecorded on optical disks and downloadable via the Internet; television shows about comedy, drama, animation, action, horror, fantasy, fiction and documentaries prerecorded on optical disks and downloadable via the Internet; electronic books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks in the field of fiction prerecorded on computer media and downloadable via the Internet; Downloadable computer software development tools; Downloadable desktop publishing software; Downloadable software for text, image and sound transmission, editing and display used in the publishing industry; Downloadable game software; Downloadable software in the nature of drivers and firmware for operating computers, tablets and digital devices; Downloadable software for accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; electronic devices, namely, computers, tablet computers, electronic book readers, electronic personal organizers, personal digital assistants, mobile telephones, global positioning system (GPS) navigation devices, digital audio and video players and recorders, digital media players and recorders, audio amplifiers, audio speakers, audio receivers, electric power converters, and inverters, home theater systems comprising audio amplifiers and audio speakers, and portable and handheld digital electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data; parts, peripherals, components, cables and accessories for electronic devices, namely, computer mice, keyboards, flat panel display screens, Video  monitors, electric wires, cables, cable connectors, Electric cable adapters, modems, Document printers, remote controls for {indicate specific devices, e.g. radios, televisions, stereos} [excluding gaming apparatus], disk drives, memory cards, memory card readers, memory card adapters, electronic docking stations, batteries, battery chargers, headsets for use with computers, headphones and earphones, audio speakers, speaker enclosures, microphones, cellphone cases, cellphone covers, cellphone holders, privacy display screen protectors specially adapted to {indicate specific device, e.g., laptops, cell phones, personal digital assistants, etc.} [excluding gaming apparatus], protective screens adapted for use with {specify type of electronic equipment, e.g., computers, televisions, PC tablets, etc.} [excluding gaming apparatus], and stands for personal digital electronic devices, namely, {indicate specific device, e.g., cell phones, MP3 players, personal digital assistants, etc.} [excluding gaming apparatus]; and computer hardware, peripherals and cables; downloadable text, images, audio, video, data, webcasts and podcasts in the field of {specify field}

 

Class 035: Acceptable as applied for.

 

Class 038: Providing access to non-downloadable pre-recorded audio, visual and audiovisual works, namely, electronic transmission and streaming of digital media and digitally recorded music, movies, television shows, photos, books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks for others via global and local computer networks; providing multiple user access to a global computer information network; communication services, namely, transmitting, receiving, streaming, broadcasting and transferring text, images, audio, video, data, webcasts and podcasts via telecommunications networks, wireless communications networks, and the Internet; telecommunication services, namely, providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works for electronic devices; telecommunication services, namely, online chat rooms for transmission of messages among users in the field of {indicate field or subject}; providing internet access to online directories, websites, blogs, and on-line reference materials; electronic data transmission services

 

Class 041: Acceptable as applied for.

 

Class 042: Website hosting and web hosting of third party digital data, content, photos, videos, text, data, images, web sites and other digital content; web hosting of digital content on global computer networks, wireless networks, and electronic communications networks; computer services, namely, creating online and virtual communities for users to participate in discussions, obtain feedback, from virtual communities, and engage in social networking in the field of {indicate specific field, e.g., mathematics, music, etc.}; design and development of computer software; document data transfer from one computer format to another; search services, namely providing online search engines and providing search platforms to allow users to request and receive, content, text, visual works, audio works, audiovisual works, literary works, data, files, documents, photos, text, data, images and electronic works; computer software programming, consulting, support in the nature of updating and installing software and troubleshooting of software and hardware problems, and maintenance; providing temporary use of non-downloadable computer software and hosting online facilities for others for publishing, online gaming, operating retail and e-commerce web sites, software development, and accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; providing temporary use of non-downloadable computer software for generating customized purchase recommendations; providing an internet website portal featuring electronic device management and configuration services

 

See TMEP §§1402.01, 1402.03

 

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.

 

RESPONSE

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

If applicant does not timely respond to this Office action, the following goods and services will be deleted from the application:  Computer and electronic game programs; audio, visual and audiovisual works in the nature of digitally recorded music files prerecorded on compact discs or downloadable via the Internet; motion picture films featuring comedy, drama, animation, action, horror, fantasy, family, fiction and documentaries prerecorded on optical disks or downloadable via the Internet; television shows about comedy, drama, animation, action, horror, fantasy, fiction and documentaries prerecorded on optical disks or downloadable via the Internet; electronic books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks in the field of fiction prerecorded on computer media or downloadable via the Internet; computer software development tools; desktop publishing software; software for text, image and sound transmission, editing and display used in the publishing industry; game software; software in the nature of drivers and firmware for operating computers, tablets and digital devices; software for accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; mice; printers; wires; monitors; remote controls; cable adapters; headsets; speakers; cases, covers, holders, privacy display screen protectors, protective screens, and stands; telecommunication services, namely, online chat rooms; web hosting of digital content on global computer networks, wireless networks, and electronic communications networks; computer services, namely, creating online and virtual communities for users to participate in discussions, obtain feedback, form virtual communities, and engage in social networking.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following goods, services and classes only:  electronic devices, namely, computers, tablet computers, electronic book readers, electronic personal organizers, personal digital assistants, mobile telephones, global positioning system (GPS) navigation devices, digital audio and video players and recorders, digital media players and recorders, audio amplifiers, audio speakers, audio receivers, electric power converters, and inverters, home theater systems comprising audio amplifiers and audio speakers, and portable and handheld digital electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data; parts, peripherals, components, cables and accessories for electronic devices, namely, keyboards, flat panel display screens, cables, cable connectors, modems, disk drives, memory cards, memory card readers, memory card adapters, electronic docking stations, batteries, battery chargers, headphones and earphones, speaker enclosures, microphones, and computer hardware, peripherals and cables; Class 035, Providing access to non-downloadable pre-recorded audio, visual and audiovisual works, namely, electronic transmission and streaming of digital media and digitally recorded music, movies, television shows, photos, books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks for others via global and local computer networks; providing multiple user access to a global computer information network; communication services, namely, transmitting, receiving, streaming, broadcasting and transferring text, images, audio, video, data, webcasts and podcasts via telecommunications networks, wireless communications networks, and the Internet; telecommunication services, namely, providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works for electronic devices; providing internet access to online directories, websites, blogs, and on-line reference materials; electronic data transmission services; Class 041 and Website hosting and web hosting of third party digital data, content, photos, videos, text, data, images, web sites and other digital content; web hosting of digital content on global computer networks, wireless networks, and electronic communications networks; design and development of computer software; document data transfer from one computer format to another; search services, namely providing online search engines and providing search platforms to allow users to request and receive, content, text, visual works, audio works, audiovisual works, literary works, data, files, documents, photos, text, data, images and electronic works; computer software programming, consulting, support in the nature of updating and installing software and troubleshooting of software and hardware problems, and maintenance; providing temporary use of non-downloadable computer software and hosting online facilities for others for publishing, online gaming, operating retail and e-commerce web sites, software development, and accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; providing temporary use of non-downloadable computer software for generating customized purchase recommendations; providing an internet website portal featuring electronic device management and configuration services. See TMEP §718.02(a). 

 

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.  

 

 

 

/George Murray/

Examining Attorney

Law Office 121

571-270-5101

George.Murray@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 5/14/2019 FOR U.S. APPLICATION SERIAL NO. 88319731

 

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 5/14/2019 (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.