| To: | Flaregun, Inc. (trademarks@hmlglaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88381848 - MERCHUAL REALITY - N/A |
| Sent: | 6/28/2019 2:29:08 PM |
| Sent As: | ECOM109@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88381848
MARK: MERCHUAL REALITY
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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: Flaregun, Inc.
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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: 6/28/2019
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 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).
IDENTIFICATION OF GOODS & SERVICES-INDEFINITE
The wording identified below in the identification of goods and/or services must be clarified because it is indefinite and does not describe the actual nature of the goods and/or services offered. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Further, the identification for software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for 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).
The USPTO requires such specificity 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).
Applicant may substitute the following wording, if accurate:
Class 9: “Downloadable computer application software for mobile phones, namely, software for using augmented reality, GPS 3D mapping, and near field communication to visually locate, view and purchase products and services in concerts, sports events, conventions, theme parks, casinos, and any public gathering in the nature of entertainment; Downloadable computer application software for augmented reality graphical interface representation of a user's mobile device using GPS location over a camera-based computer vision interface; Downloadable computer application software, namely, embedded firmware and recorded software for point-of-sale hardware systems comprised of {identify the nature of the systems, e..g., point-of-sale- terminals} for {identify the specific function of the software, e.g., processing payments} by providing an interface with any device with a microprocessor for mobile devices, laptops and tablets; Downloadable computer application software, namely, providing software that allows users to interact with physical and virtual content, products and merchandise based on the user location; and downloadable computer application software, namely, applying machine learning to deliver data for augmented reality interface for online sellers”.
Class 35: “{Identify the specific nature of the marketplace} Providing a website featuring an online marketplace providing an augmented reality interface online marketplaces for buyers and
sellers of goods and/or services; facilitating the exchange and sale of services and products of third parties via computer and communication networks,
namely, {identify the specific nature of the service, e.g., operating an on-line marketplace for sellers and buyers of goods and/or services};
business and advertising services, namely, managing, tracking, analyzing, reporting, measuring, optimizing electronic payment transaction data for others, aggregating customer use behavior and
creating a metrics profile for each user to provide relevant information and delivering such content in augmented reality interface by creating a metrics profile for each user; and marketing,
advertising and promotion services, namely, providing information regarding discounts, coupons, rebates, vouchers, links to retail websites of others, and special offers for the goods and services of
others”.
Class 36: “Financial services, namely, providing electronic payment transfer services for others in the nature of {identify the
specific nature of the transfer services, e.g., processing and subsequent transmission of bill payment data}”; facilitating the exchange and sale of services and products of third parties via computer and communication networks, namely, for point-of-sale systems and devices with a
microprocessor financial transaction services, namely, providing secure commercial transactions via computer and communication networks utilizing point of sale systems and devices with a
microprocessor in the nature of a mobile device with payment options at a point of sale”.
While the suggested wording above provides examples of wording that meets the Office’s requirements for specificity, it does not provide every possible acceptable identification. Applicant must ensure that any identification submitted is accurate, concise, properly classified, and does not include goods or services not included in the identification submitted with the application as originally filed. Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or 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.
In this case, applicant must disclaim the wording “REALITY” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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).
This wording appears in applicant’s identification of goods and/or services. Therefore, the wording merely describes applicant’s goods and/or services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “REALITY” 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.
Inquiry on Wording in Mark
To permit proper examination of the application, applicant must specify whether “MERCHUAL” in the mark has any meaning in a foreign language. See 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §§809, 814. If the wording has meaning in a foreign language, applicant must provide an English translation, and may use the following format: The English translation of “MERCHUAL” is {insert translation}. TMEP §809.03.
Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following statement: The wording “MERCHUAL” has no meaning in a foreign language.
Id.
Further, please explain whether the wording in the mark “MERCHUAL” has any meaning or significance in the industry in which the goods and/or services are manufactured/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. See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
RESPONSE GUIDELINES
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.
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.
Carolyn Wlodarczyk
/Carolyn Wlodarczyk/
Trademark Examining Attorney
Law Office 109
571-272-9273
carolyn.wlodarczyk@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.