Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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 25, 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.

 

SUMMARY OF ISSUES:

• Identification and Classification of Services
• English Translation Required

 

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 AND CLASSIFICATION OF SERVICES

 

Applicant has applied for the following identification of services:

 

Class 35: business networking services, namely, arranging business introductions between accredited individuals, financial professionals and motion picture, feature film, television, and web content production companies; financial intermediary services, namely, facilitating and arranging for the financing of projects and expenditures for motion picture projects, feature films, motion picture films, and television programs; business management services, namely, providing business management consultation and advice in the field of marketing and distribution of motion picture films, feature films, and television programs; marketing services, namely, promoting and advertising the goods and services of others in the field of motion picture films, feature films, and television programs; providing advertising, marketing and promotional services, namely, development of advertising and promotional campaigns for the marketing and distribution of motion picture films, feature films, and television programs; business services, namely, matching potential private investors with filmmakers needing funding; loan financing and project financing for filmmakers and businesses, namely, motion picture filmmakers and producers, film producers, television producers, and website producers

 

Class 41: entertainment services in the nature of development, creation, production, distribution, and post-production services in the field of movies and television; film and video production consulting services; scriptwriting services for non-advertising purposes

 

Class 45: intellectual property licensing and management; social introduction and networking services in the field of film, television and theatre

 

The identification of services is indefinite and must be clarified because it does not specify the nature of the applicant’s services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services in classes 35, 41, and 45. See TMEP §1402.01.  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.

 

Additionally, applicant has classified “loan financing and project financing for filmmakers and businesses, namely, motion picture filmmakers and producers, film producers, television producers, and website producers” in International Class 35; however, the proper classification is International Class 36.  Therefore, applicant may respond by (1) adding International Class 36 to the application and reclassifying these services in the proper international class, (2) deleting “loan financing and project financing for filmmakers and businesses, namely, motion picture filmmakers and producers, film producers, television producers, and website producers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate: 

 

Class 35: Business networking SERVICES FEATURING BUSINESS INTRODUCTIONS BETWEEN accredited individuals, financial professionals and motion picture, feature film, television, and web content production companies; financial intermediary services, namely, facilitating THE CHANNELING OF FUNDS BETWEEN LENDERS AND BORROWERS BY CONNECTING THOSE WITH A FINANCIAL SURPLUS WITH THOSE HAVING A FINANCIAL DEBT for the purpose of financing of projects and expenditures for motion picture projects, feature films, motion picture films, and television programs; business management services, namely, providing business management consultation and BUSINESS advice in the field of marketing and distribution of motion picture films, feature films, and television programs; marketing services, namely, promoting and advertising the goods and services of others in the field of motion picture films, feature films, and television programs; providing advertising, marketing and promotional services, namely, development of advertising and promotional campaigns for the marketing and distribution of motion picture films, feature films, and television programs; business services, namely, matching potential private investors with filmmakers needing funding;

 

Class 36: Loan financing and project financing for filmmakers, businesses, motion picture filmmakers and producers, film producers, television producers, and website producers

 

Class 41: entertainment services in the nature of development, creation, production, distribution, and post-production OF motion pictures and television SHOWS; film and video production consulting services; scriptwriting services for non-advertising purposes

 

Class 45: Licensing OF intellectual property RIGHTS; intellectual property management, NAMELY, LEGAL SERVICES IN THE FIELD OF INTELLECTUAL PROPERTY RIGHTS MANAGEMENT; INTERNET-BASED social introduction and networking services in the field of film, television and theatre; Social networking services in the field of film, television and theatre PROVIDED BY A WEBSITE; SOCIAL INTRODUCTION AGENCIES IN THE FIELD OF FILM, TELEVISION AND THEATRE

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

ADVISORY – MULTIPLE CLASSES

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 3 class.  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.

 

ENGLISH TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark BANDERA.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “BANDERA” in the mark is “flag”.  TMEP §809.03.  See attached translation evidence.

 

RESPONSE TO OFFICE ACTION

 

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.

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

Solite, Joshua

/Joshua A. Solite/

Law Clerk

Law Office 123

U.S. Patent & Trademark Office

(571) 272-3199

joshua.solite@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 25, 2019 for

U.S. Trademark Application Serial No. 88410083

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Solite, Joshua

/Joshua A. Solite/

Law Clerk

Law Office 123

U.S. Patent & Trademark Office

(571) 272-3199

joshua.solite@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 25, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”