Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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 23, 2019

 

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On July 23, 2019, the examining attorney and Robert Horowitz discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

Summary of Refusals and/or Requirements

 

The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.

 

 

 

n  Disclaimer statement required

n  Amend certain items in the description of goods/services

n  Comply with classification requirements

 

 

DISCLAIMER

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “PICTURES STUDIO” 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). 

 

PICTURE is defined as “a movie,” and “STUDIO” is defined as “a room, building or group of buildings where movies, television shows or radio programs are produced; a company that produces films.” See attached definitions from www.ahdictionary.com.  The description of services includes sightseeing tours of “motion picture” production facilities, as well as production and distribution of “motion picture films.” Therefore, this wording immediately tells consumers that the services feature tours, demonstrations, exhibitions and production associated with a movie or picture studio where films are produced. Moreover, the identification of goods and retail stores in Class 35 are broad enough to encompass promotional items, and the sale of same, that promote the film studio and its works. The applicant also appears to own several registrations wherein the terms PICTURES and STUDIO were disclaimed for related goods and services.  Thus, the wording merely describes a feature or subject matter of the 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 “PICTURES STUDIO” 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. 

 

 

AMEND DESCRIPTION OF GOODS AND SERVICES

 

The wording referenced in the identification of goods and services is indefinite and must be clarified because its nature is not clear, and the items could require reclassification.  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 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.  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.

 

As to software in Class 9, the wording must be clarified because it 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).  The 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 applicant must also specify the format of the software to determine proper classification.

 

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.

 

 

Applicant may substitute the following wording, if accurate. Suggested changes and additions are noted in bold. Items the applicant must clarify are noted in italics. Items the applicant must delete, or clarify, are noted with lines through them.

 

 

Class 9:           (add “downloadable” or “recorded” for software in class 9) Computer programs for sharing a device's displayed contents with others and simultaneously communicating with them via video chat; (add “downloadable” or “recorded” for software in class 9) smartphone application software for sharing a smartphone's displayed contents with others and simultaneously communicating with them via video chat

 

 

Class 14:         no changes required - Key rings of precious metals; personal ornaments, namely, earrings, tie clips, tie pins, necklaces, bracelets, pendants, brooches, rings, lockets; cuff links; clocks; watches

 

Class 16:         no changes required - Paper products, namely, stationery, binders, calendars, stickers, bookmarks, greeting cards, posters, postcards, writing utensils, pens, pencils, blank journals, notebooks, photographs, paper folders, paper gift bags; books in the field of motion picture films, television shows and entertainment, comic books, trading cards

 

 

Class 18:         Bags, namely, all-purpose carrying bags, athletic bags, shoulder bags, traveling bags; pouches, namely, pouches of textile, pouches of leather, waist pouches; pouches (delete “and the like”  or replace that wording with the common name for the goods), namely, vinyl and canvas pouches, pouches of leather, pouches of textile; card cases, namely, credit card cases, business card cases, name card cases; key cases; purses; wallets; umbrellas; clothing for pets; unfitted vanity cases

 

 

Class 21:         Bowls; lunchboxes; mugs; drinking bottles for sports

 

 

Class 25:         no changes required - Clothing, namely, shirts, pants, coats, and dresses; shawls; scarves; neckties; bandanas; mufflers; ear muffs; headwear, namely hats, caps and berets; belts for clothing; footwear

 

 

Class 28:         no changes required - Christmas tree decorations; Christmas tree ornaments; golf ball markers; toys, games, and playthings, namely, dolls, toy figures, plush toys, rubber character toys, bendable toys, jigsaw and manipulative puzzles, board games, card games, playing cards, puzzles

 

 

Class 35:         no changes required - Retail store and online retail store services featuring mousepads, decorative magnets, eyeglasses, sunglasses, cases for smartphones, paper products, stationery, bags, pouches, key cases, purses, wallets, umbrellas, card cases, bowls, lunchboxes, mugs, drinking bottles, clothing, shawls, scarves, neckties, bandanas, mufflers, ear muffs, headwear, footwear, Christmas tree decorations, golf ball markers, toys

 

 

Class 41:         no changes required -Education and entertainment services, namely, providing narrated sightseeing tours of motion picture and television production facilities including exhibitions and demonstrations; amusement park and theme park services; entertainment services in the nature of production and distribution of motion picture films

 

 

Class 42:         providing temporary use of online, nondownloadable computer programs for sharing a device's displayed contents with others and simultaneously communicating with them via video chat; Software as a service services SAAS featuring smartphone application software for sharing a smartphone's displayed contents with others and simultaneously communicating with them via video chat

 

 

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.

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes noted above.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

 

CLASSIFICATION

 

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 ten classes; however, applicant submitted a fee(s) sufficient for only nine class(es).  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.

 

FEES

 

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.

 

 

 

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.  

 

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. 

 

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

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 23, 2019 for

U.S. Trademark Application Serial No. 88462471

 

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. 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@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 23, 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.”