To: | EarthLink, LLC (bdavis@vlplawgroup.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88334584 - EARTHLINK LOCAL - N/A |
Sent: | 5/20/2019 5:20:14 PM |
Sent As: | ECOM124@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. 88334584
MARK: EARTHLINK LOCAL
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: EarthLink, LLC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 5/20/2019
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 – No Conflicting Marks
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).
Applicant must clarify some of the wording in the identification of services for International Classes 35, 38, and 45 because it is indefinite or overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01,1402.03.
The applicant insufficiently describes the following services in Class 35:
· The wording “Logo design for others” is overbroad because this wording could encompass creating logos in the nature of choosing colors in Class 35 or graphic design services in Class 42.
The applicant insufficiently describes the following services in Class 38:
· The wording “Internet provider services” is indefinite because it does not fully clarify the nature of the services, such as, internet services provider services.
· The wording “email services” is indefinite because it does not clarify the nature of the services, such as, email forwarding services.
The applicant insufficiently describes the following services in Class 45:
· The wording “Domain name registry services, namely, coordinating the registration of domain names for identification of users and internet protocol addresses on the internet” is indefinite because it is unclear if these are domain name registrar services in Class 45 as opposed to domain name registry operator services in Class 42.
Applicant may adopt the following identification, if accurate:
Class 35: Providing an online directory featuring information about businesses via a global communications network; Logo design for others, namely, creating corporate logos for others; Business management consulting services in the field of digital marketing services; Digital and online marketing and advertising services; Development of marketing strategies and concepts; Dissemination of advertising for others via the Internet; Pay per click (PPC) advertising management services; Pay per click advertising; Search engine optimization for sales promotion; Web site traffic optimization
Class 38: Providing multiple user access to a global computer information network for the transfer and dissemination of a wide range of information; communications services, namely, transmission of voice, audio, visual images, messages and data by telecommunications networks, mobile communications networks, wireless communications networks, the Internet, information services networks, and data networks; Internet service provider services; email services, namely, {indicate type, e.g., e-mail forwarding services}; voicemail services; voice over Internet protocol services; web conferencing services
Class 42: Design, creation, hosting and maintenance of websites for others; Graphic design services, namely, logo design for others
Class 45: Domain name registrar services, namely, coordinating the registration of domain names for identification of users and internet protocol addresses on the internet
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.
Applicant must provide a disclaimer of the unregistrable part( of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “LOCAL” because it is not inherently distinctive. The unregistrable term is at best merely descriptive of a purpose of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from American Heritage dictionary shows this wording means “Of, relating to, or characteristic of a particular place.” Thus, the wording merely describes applicant’s services because they feature services that are intended to support a particular place.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LOCAL” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response Guidelines
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.
/Alexandra El-Bayeh/
Trademark Examining Attorney
Law Office 124
(571) 270-5911
alexandra.el-bayeh@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.