To: | Fan, Haiyan (alistairchanip@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88375908 - CHINESTORY - N/A |
Sent: | 6/19/2019 12:56:16 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88375908
MARK: CHINESTORY
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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: Fan, Haiyan
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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: 6/19/2019
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
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).
Identification of Goods and Services
Further, the identification of goods is indefinite and overly broad and must be clarified because as of 1/1/19 to comply with the latest Nice agreement, all software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods and be properly classified in class 9. If the software is non-downloadable, such would typically be in class 42 as shown below. Thus, for all software applicant must make this clarification and classify accordingly. Note that an exception is for game software. Providing online non-downloadable game software is in class 41.
Applicant may adopt the following wording, if accurate:
Downloadable electronic publications in the nature of books, ebooks, magazines and newsletters in the field of foreign language instruction; prerecorded compact discs featuring publications in the nature of books, e-books and magazines in the field of foreign language instruction in electronically readable form; downloadable electronic publications in the nature of books, e-books, magazines and newsletters in the field of foreign language instruction for teaching foreign languages; prerecorded compact discs featuring publications in the nature of books, e-books and magazines in the field of foreign language instruction for teaching foreign languages; prerecorded compact discs, DVDs and other digital recording media, namely, digital video discs featuring foreign language instruction; [clarify the software format as discussed above eg. downloadable computer software for providing instruction in foreign language in class 9; recorded computer software for providing instruction in foreign language in class 9; providing temporary use of on-line non-downloadable computer software for providing instruction in foreign language in class 42]; [clarify the format eg. downloadable and recorded educational software featuring foreign language instruction]; [clarify the format eg. downloadable and recorded computer software for teaching foreign languages]; [clarify the format eg. downloadable and recorded children's education software]; children's educational music CDs and DVDs; [clarify the format eg. downloadable and recorded computer application software for mobile telephones, namely, software for learning Chinese]; [clarify the format eg. downloadable and recorded computer application software for mobile telephones, computers, digital notepads, tablet devices, mobile computing devices, namely, software for learning Chinese]; [as to the computer game software, if such is recorded or downloadable it is in class 9 whereas if it is non-downloadable it is in class 41 eg. downloadable and recorded computer game software in class 9, providing temporary use of non-downloadable game software in class 41]; [clarify as in the previous entry eg. downloadable computer game software for use on mobile telephones, computers and mobile computing devices]; [clarify as in previous entries eg. downloadable computer game software for use with personal computers, home video game consoles used with televisions and arcade-based video game consoles]; [clarify the format eg. recorded educational software featuring instruction in teaching Chinese]; downloadable and downloadable streamed audio and video files featuring instruction in foreign language; [clarify eg. downloadable sound, music, image, video and game data files obtainable via stream access for mobile telephones, computers and mobile computing devices]; [clarify the type and classify accordingly eg. Educational services, namely, providing on-line courses of instruction in the field of Chinese language instruction in class 41]; [specify the field eg. audio books in the field of Chinese language instruction]; and [clarify the format/subject matter and classify accordingly, eg. downloadable podcasts in the field of Chinese language instruction in class 9; Entertainment services, namely, providing podcasts in the field of Chinese culture in class 41], in class 9 [unless otherwise noted]
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.
Multiple Class Application Requirements-Section 1(a)
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 9; and applicant needs a specimen for class(es) 41 and 42. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Rebecca Gilbert/
Rebecca Gilbert
Examining Attorney
Law Office 103
571-272-9431
rebecca.gilbert@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.