To: | iStreamPlanet Co., LLC (TBSUSPTO@TURNER.COM) |
Subject: | U.S. Trademark Application Serial No. 88401813 - ISTREAM - N/A |
Sent: | July 11, 2019 06:53:09 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88401813
Mark: ISTREAM
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Correspondence Address: |
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Applicant: iStreamPlanet Co., LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 11, 2019
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).
Summary of the Issues
1. Registration Refused – Mark is Merely Descriptive;
2. Requirement for Additional Information.
Registration Refused – Mark is Merely Descriptive
Registration is refused because the applied-for mark merely describes a feature and characteristic of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The applicant has applied for the mark ISTREAM for “Video-on-demand and live video transmission services; Video broadcasting; Electronic transmission and streaming of audio, visual and digital media content for others via the Internet and digital communications networks; Streaming of data” in International Class 38.
When a mark consists of this prefix coupled with a descriptive word or term for Internet-related goods and/or services, then the entire mark may be considered merely descriptive. See RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1810-14 (TTAB 2018) (holding IPAD merely descriptive of web-based software for mobile-access database management in which users can store and access their personal information); In re Zanova, Inc., 59 USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others); TMEP §1209.03(d).
As the applicant’s identification makes clear, the applicant is providing electronic transmission and streaming of audio, visual and digital media content for others via the Internet and digital communications networks, and the streaming of data. Thus, applicant’s use of the term STREAM in its mark immediately describes a feature and characteristic of the services. As such, the mark of the applicant consists of the descriptive term STREAM with the “I” prefix. Thus, the applicant’s mark is merely descriptive and must be refused registration under Trademark Act Section 2(e)(1).
Requirement for Additional Information
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
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. Merely stating that information about the services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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.
How to respond. Click to file a response to this nonfinal Office action
If the applicant has any questions, please contact the undersigned.
/Ty Murray/
Attorney-Advisor
United States Patent and Trademark Office
Law Office 113
(571)272-9438
ty.murray@uspto.gov
RESPONSE GUIDANCE