To: | Blue Ant Television Ltd. (trademarks@kelleydrye.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88365855 - LOVE NATURE - 025495.0001 |
Sent: | 6/14/2019 5:24:57 PM |
Sent As: | ECOM118@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88365855
MARK: LOVE NATURE
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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: Blue Ant Television Ltd.
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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: 6/14/2019
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 RESULTS: NO CONFLICTING 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).
REQUIREMENT: IDENTIFICATION & CLASSIFICATION OF GOODS & SERVICES CLARIFICATION
First, the identification for “electronic educational materials” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the publications and could identify publications in International Classes 9 and 41. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x). Applicant must amend this identification to clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41. In addition, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications. See TMEP §1402.03(e). If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9). Id.
The following are examples of acceptable formats for identifications for electronic publications (additional information must be added in each identification below, as indicated in the curly brackets):
Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;
Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or
Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter} in International Class 41.
Second, the identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Applicant must specify the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
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).
For example, the following are acceptable identifications for software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” Finally, the following are acceptable identifications for non-downloadable game software in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
SUGGESTED IDENTIFICATION
Instructions and suggested changes are shown in bold text. Applicant may adopt the following identification, if accurate:
IC 9: Downloadable electronic educational materials, namely, books, booklets, magazines, newsletters, pamphlets, fact sheets, brochures, guidebooks, reports and posters featuring educational information in the fields of travel, tourism, nature, wildlife, geography, culture, natural history, the environment, animals, science, history, archeology, ecology, biology, anthropology, astronomy, geology, economy, meteorology, cartography, active sports, children's activity, education, exploration, adventure, genetics, and social studies; video cassettes, cartridges, compact discs, video discs, DVDs, CD-ROMs and {specify the type of computer software programs in International Class 9, e.g., downloadable computer software programs, computer software programs recorded on computer media} featuring interactive games all featuring educational information in the fields of travel, tourism, nature, wildlife, geography, culture, natural history, the environment, animals, science, history, archeology, ecology, biology, anthropology, astronomy, geology, economy, meteorology, cartography, active sports, children's activity, education, exploration, adventure, genetics, and social studies; computer-based electronic learning aids containing both hardware and {specify the type of educational software in International Class 9, e.g., downloadable educational software, educational software recorded on computer media} all featuring educational information in the fields of travel, tourism, nature, wildlife, geography, culture, natural history, the environment, animals, science, history, archeology, ecology, biology, anthropology, astronomy, geology, economy, meteorology, cartography, active sports, children's activity, education, exploration, adventure, genetics, and social studies
IC 38: No changes needed
IC 41: Non-downloadable electronic educational materials, namely, books, booklets, magazines, newsletters, pamphlets, fact sheets, brochures, guidebooks, reports and posters featuring educational information in the fields of travel, tourism, nature, wildlife, geography, culture, natural history, the environment, animals, science, history, archeology, ecology, biology, anthropology, astronomy, geology, economy, meteorology, cartography, active sports, children's activity, education, exploration, adventure, genetics, and social studies; Providing temporary use of non-downloadable interactive game software featuring educational information in the fields of travel, tourism, nature, wildlife, geography, culture, natural history, the environment, animals, science, history, archeology, ecology, biology, anthropology, astronomy, geology, economy, meteorology, cartography, active sports, children's activity, education, exploration, adventure, genetics, and social studies
IC 42: {Specify the type of educational software in International Class 42, e.g., Providing temporary use of on-line non-downloadable educational software} featuring educational information in the fields of travel, tourism, nature, wildlife, geography, culture, natural history, the environment, animals, science, history, archeology, ecology, biology, anthropology, astronomy, geology, economy, meteorology, cartography, active sports, children's activity, education, exploration, adventure, genetics, and social studies
IDENTIFICATION ADVISORIES
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.
ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(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 4 classes; however, applicant submitted fees sufficient for only 2 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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
In this case, applicant must disclaim the word “NATURE” because it is not inherently distinctive. These unregistrable term at best are merely descriptive of a characteristic or feature of applicant’s goods and 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 the Oxford Dictionaries shows this word “NATURE” means “the phenomena of the physical world collectively, including plants, animals, the landscape, and other features and products of the earth, as opposed to humans or human creations.” See the dictionary definition at Exhibit A. The identification of goods and services shows that the applicant’s goods and services feature “educational information in the fields of travel, tourism, nature, wildlife, geography, culture, natural history, the environment, animals, science, history, archeology, ecology, biology, anthropology, astronomy, geology, economy, meteorology, cartography, active sports, children's activity, education, exploration, adventure, genetics, and social studies.” In addition, applicant’s website, http://blueantmedia.com, shows that the applicant’s goods and services are related to nature. Specifically, applicant’s website shows the following.
Love Nature brings you closer to the beauty and wonder of nature, sharing awe-inspiring stories and shining a light on the fight for survival in a changing world.
See the evidence from the applicant’s website at Exhibit B. Thus, the word “NATURE” merely describes applicant’s goods and services because it indicates that the applicant’s goods and services feature information relating to nature.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “NATURE” 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.
ADVISORY: RESPONDING TO THIS OFFICE ACTION
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.
/Tina Brown/
Trademark Examining Attorney
Law Office 118
E: tina.brown@uspto.gov
T: 571-272-8864
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.