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: 6/3/2019

 

 

 

 

 

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.  

 

 

 

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 Results

 

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).

 

Significance

 

To permit proper examination of the application, applicant must provide all the following information:

 

(1)  Explain whether the wording in the mark “JAMA” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether the wording in the mark “JAMA” identifies a geographic place. 

 

(3)  Respond to the following questions: 

           

            Is JAMA a word in a foreign language? If yes, what is its meaning?

            Is JAMA an acronym? If yes, what does each letter signify?

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Description of the Mark

 

Applicant must submit an amended description of the mark because the current one uses broad, vague language that does not accurately describe the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02.  In this case, the description is vague because the wording “figurative image” does not provide any information about the appearance of the design element.

 

The following description is suggested, if accurate:  The mark consists of a large teardrop shape partially enclosing a smaller teardrop shape above the word JAMA.

 

Identification of Goods and Services

 

The identification of goods is indefinite and must be clarified as set forth in detail below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

            Class 9

 

“Interactive social computer software for creating local virtual communities” is vague for two reasons.  First, “interactive” could identify software that is non-downloadable.  Only software that is downloadable or recorded belongs in Class 9.  Second, the purpose of the community must be stated.  If accurate, the applicant may adopt:

 

Downloadable computer software for creating virtual communities for the purpose of connecting mothers to other mothers and providing information about parenting activities.

 

“Downloadable software in the nature of a mobile application” is vague because it does not state the purpose of the software.  If accurate, the applicant may adopt:

 

Downloadable computer software in the nature of a mobile application for connecting mothers to other mothers and providing information about parenting activities.

 

“Computer application software for mobile phones” is vague for two reasons.  First, only software that is downloadable or recorded belongs in Class 9.  Second, the purpose of the software must be stated.  If accurate, the applicant may adopt:

 

Downloadable computer software in the nature of an application for mobile phones for connecting mothers to other mothers and providing information about parenting activities.

 

“Computer software used for creating community based social networks between mothers” is vague because only software that is downloadable or recorded belongs in Class 9.  The applicant must confirm that it offers downloadable or recorded software.  If accurate, the applicant may adopt:

 

Downloadable computer software used for creating community based social networks between mothers.

 

“Software that allows messaging other mothers in the adjacent area based on location data” is vague because only software that is downloadable or recorded belongs in Class 9.  The applicant must confirm that it offers downloadable or recorded software.  If accurate, the applicant may adopt:

 

Downloadable software that allows messaging other mothers in the adjacent area based on location data.

 

“Application software for mobile phones, handheld computers and related mobile devices, namely, software that offers users services and products to their preference in a certain area” is vague and omits necessary information, namely, that the software is downloadable or recorded. The purpose of the software also must be stated more clearly. The wording “and related mobile devices” has been omitted as vague. If accurate, the applicant may adopt:

 

Downloadable application software for mobile phones and handheld computers, namely, software for providing information about products and services available for purchase based upon a user’s location.

 

“Application software for mobile phones, handheld computers and related mobile devices, namely, software that allows users to solicit each other to connect with each other” is vague and omits necessary information, namely, that the software is downloadable or recorded. The purpose of the software also must be stated more clearly. The wording “and related mobile devices” has been omitted as vague. If accurate, the applicant may adopt:

 

Downloadable application software for mobile phones and handheld computers, namely, software for social networking.

 

“Computer application messaging software for mobile phones, handheld computers and related mobile devices, namely, software that allows users to ask questions and receive answers from other users” is vague and omits necessary information, namely, that the software is downloadable or recorded. The purpose of the software also must be stated more clearly. The wording “and related mobile devices” has been omitted as vague. If accurate, the applicant may adopt:  

 

Downloadable computer application messaging software for mobile phones and handheld computers, namely, software that allows users to ask questions and receive answers from other users on the topic of parenting.

 

“Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks” is vague and omits necessary information, namely, that the software is downloadable or recorded.  If accurate, the applicant may adopt:

 

Downloadable software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks.

 

“Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information” is vague and omits necessary information, namely, that the software is downloadable or recorded.  If accurate, the applicant may adopt:

 

Downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information.

 

“Computer search engine software” is vague and omits necessary information, namely, that the software is downloadable or recorded.  If accurate, the applicant may adopt:

 

            Downloadable computer search engine software.

 

“Computer software for accessing, browsing and searching online databases” is vague and omits necessary information, namely, that the software is downloadable or recorded.  If accurate, the applicant may adopt:

 

            Downloadable computer software for accessing, browsing, and searching online databases.

 

“Computer software for personal information management, and data synchronization software” is vague and omits necessary information, namely, that the software is downloadable or recorded.  In addition, the purpose of the software must be stated mark clearly. If accurate, the applicant may adopt:

 

Downloadable computer software for personal information management, namely, _______ and downloadable data synchronization software, namely, _______.

 

            Class 42

 

“Providing temporary use of software application that allows users of mobile phones, handheld computers and related mobile devices to offer users different service providers and vendors in their area” states the purpose of the software in a way that is too vague.  It is not clear how a software application can offer a “provider,” rather than a service, and the applicant does not state the reason for the offer.  If accurate, the applicant may adopt:

 

Providing temporary use of a non-downloadable software application that allows users of mobile phones and handheld computers to receive offers of goods and services from retailers near their geographic location.

 

“Interlinking of people services for a social purpose, namely, bringing together of people with common interests” is confusing.  The term “interlinking” is not found in the Manual of Acceptable Identification and does not appear to identify a computer service in Class 42.  If accurate, the applicant may adopt:

 

Association services, namely, promoting the interests of mothers of young children, in International Class 35.

 

“On-line social networking services” belong in Class 45.

 

“Personal and social on-line services rendered by others to meet the needs of individuals, enabling users to meet other people, to build, create, manage and expand their social network” is overbroad and could include services in Class 44 for example “providing in-person holistic health care services.”  If accurate, the applicant may amend to:

 

Personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, in International Class 45.

 

The wording “providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, by means of computer and communication networks” is vague and potentially includes several classes.  Databases are classified according to the subject matter of the information they contain. The applicant must specify the type of information being provided.  The applicant should avoid the use of the catchall term “including.”  Examples of correct identifications are set forth below:

 

Providing an on-line searchable database featuring political information on election campaigns, in International Class 35.

 

Providing an on-line searchable database featuring health-related information on all the risks that come with pregnancy and delivery for both mother and baby, in International Class 44.

 

Providing an online searchable database in the field of patent applications, in International Class 45.

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See 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.

 

Because it appears that, when properly identified, the applicant’s goods and services will belong in more international classes than currently are of record, information about adding classes to an application is set forth below:

 

Combined Applications

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least four classes; however, applicant submitted fees sufficient for only two classes.  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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Foreign Registration

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

General Information

 

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.

 

 

 

 

 

 

 

/Doritt Carroll/

Trademark Examining Attorney, Law Office 116

doritt.carroll@uspto.gov

phone:  571-272-9138

fax:       571-273-9138

 

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 6/3/2019 FOR U.S. APPLICATION SERIAL NO. 88345857

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 6/3/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Doritt Carroll/

Trademark Examining Attorney, Law Office 116

doritt.carroll@uspto.gov

phone:  571-272-9138

fax:       571-273-9138

 

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.