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 13, 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.  

 

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

 

This application was approved for publication on May 14, 2019.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

Identification Unacceptable-Indefinite Wording-Class 9

The wording “Computer software for transmitting data, graphics, audio and/or video over electronic communications networks; computer software creating, offering, hosting and delivering online conferences, meetings, demonstrations, tours, presentations, discussions, trainings and seminars; computer software for facilitating business transactions conducted via electronic communications networks, namely, generating business leads through hosting video content” in Class 9 is unacceptable as indefinite and must be amended as follows.  Applicant must clarify the format of multiple instances of software in Class 9. Under Nice 11-2019, computer software in Class 9 must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Therefore, applicant must specify if the software is downloadable and/or recorded in Class 9 or if the applicant is providing their temporary, online non-downloadable use which would be a service in Class 42.

 

The wording “downloadable computer software for transmitting data, graphics, audio and/or video over electronic communications networks; downloadable computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions; Downloadable computer software to enable uploading, posting, showing, playing, streaming, viewing, sharing, publishing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content and information via the Internet and other communications networks; downloadable computer software to enable sharing of multimedia content and comments among users; downloadable computer software to enable content providers to track multimedia content; downloadable computer analytics software, namely, software that provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated content” is acceptable as filed in Class 9.

 

The wording “Communications services to enable hosting, broadcasting and transmission of a wide variety of programs, meetings, events, real time information, trainings, shows, exhibitions, conferences, workshops, lectures, discussions, and seminars over global computer communications networks; telecommunication service, namely, facilitating the sending and receiving of data, files, graphics, text, voice, signals, images, sound, audio content, videos, files, messages, documents and other information over global computer communications networks; instant messaging services; web conferencing services; Video on demand transmission; streaming of audio, visual, multimedia material on the Internet; Transmission of electronic data in the form of multimedia content, namely, videos, movies, text, and audio content, via the Internet and other communications networks; telecommunication services, namely, broadcasting a wide variety of programs, meetings, events and real time information over global computer communications networks; providing secure real-time electronic communications services over a computer network for uploading, downloading, recording, sharing, exchanging, receiving, posting, storing and organizing files, data, graphics, text, voice, signals, images, sound, audio content, videos, files, messages, documents and other information over global computer communications networks; communication services to enable the provision of IT, troubleshooting, helpdesk and support services over the Internet, intranets, or extranets, by mobile telephone networks, or by other global computer networks, information networks or communications networks including wireless, cable, satellite and cloud” is acceptable as filed in Class 38.

 

The wording “Software as a service featuring software to access remote computers and computing devices, to upload, download and exchange files, to transmit data, graphics, audio and/or video, to create, offer, host, and deliver online conferences, meetings, demonstrations, tours, presentations and discussions, to provide remote support and monitoring tools for information technology, and to provide a content management systems in the fields of online project management, workplace social networking, workplace collaboration, product development, customer relations management, employee recruiting, event and meeting management and workflow management; computer services, namely, providing temporary use of non-downloadable software and software interfaces available over a network for creating personalized and customizable online web facilities for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, virtual tours, presentations and discussions; providing a website featuring technology that enables users to upload and share videos on a wide variety of topics and subjects; providing a website featuring technology that facilities conducting online conferences, meetings, demonstrations, virtual tours, presentations and interactive discussions; providing temporary use of non-downloadable software to enable uploading, posting, showing, playing, streaming, viewing, sharing, publishing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content and information via the Internet and other communications networks; providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; providing temporary use of non-downloadable software to enable content providers to track multimedia content; providing temporary use of non-downloadable analytics software, namely, software that calculates and provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated content; providing an interactive website featuring non-downloadable software technology that enable users to post, search, watch, share, critique, rate, and comment on, videos and other multimedia content via the Internet and other communications networks” is acceptable as filed in Class 42.

 

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.

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 9 will be deleted from the application: Computer software for transmitting data, graphics, audio and/or video over electronic communications networks; computer software creating, offering, hosting and delivering online conferences, meetings, demonstrations, tours, presentations, discussions, trainings and seminars; computer software for facilitating business transactions conducted via electronic communications networks, namely, generating business leads through hosting video content.  The application will then proceed only with the all other goods and services as currently specified in International Class(es) 9, 38 and 42.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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. 

 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

email: dominic.ferraiuolo@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 13, 2019 for

U.S. Trademark Application Serial No. 88324000

 

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. 

 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

email: dominic.ferraiuolo@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 13, 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.”