To: | Naver Webtoon (trademarks@rutan.com) |
Subject: | U.S. Trademark Application Serial No. 88490724 - WEBTOON - 035403.0003T |
Sent: | September 24, 2019 10:07:55 AM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88490724
Mark: WEBTOON
|
|
Correspondence Address: |
|
Applicant: Naver Webtoon
|
|
Reference/Docket No. 035403.0003T
Correspondence Email Address: |
|
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: September 24, 2019
The referenced application and communication of July 12, 2019 have been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues
· Advisory—potentially conflicting applications found;
· Request to change owner’s name not accepted—additional information required;
· Section 2(e)(1) refusal—mark is merely descriptive;
· Specimen refusal—International Classes 38 and 41;
· Identification of goods requirement.
Search Results: Potentially Conflicting Applications Found
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant May Claim Ownership of Pending Application
Applicant may provide evidence of ownership of the mark(s) by satisfying one of the following:
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of Application Serial No(s). 88490700.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that “Applicant is the owner of Application Serial No(s). 88490700,” inserting the relevant application serial number(s); and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
In addition, applicant must respond to the following issues regardless of whether it addresses the potentially conflicting application.
Request to Change Owner’s Name Not Accepted
If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, the new owner must file documentation to establish its current ownership of the application by satisfying one of the following:
(1) The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.; OR
(2) The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner. However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.
TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).
Assignments and other documents affecting title may be filed electronically. There is a fee for recording ownership changes. 37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d). Recording an assignment or other ownership transfer document does not constitute a response to an Office action. TMEP §503.01(d). Applicant must still file a separate response to this Office action. See id.
If the application was filed by the owner and the there is an inadvertent error in the applicant’s name, such as a minor typographical error or misspelling, or the name identifies a party that did not exist as of the application filing date, the application may be amended to correct the applicant’s name. TMEP §1201.02(c). In either case, applicant should include in the amendment request the reason for the correction (such as “ABC Corporation did not exist as of the filing date of the application,” or “Company” was inadvertently omitted from the applicant’s name in the application). Id.
In addition, applicant must respond to the following refusals and requirements.
Section 2(e)(1) Refusal—Mark Is Merely Descriptive
The applicant seeks to register WEBTOON for use in connection with comic books, graphic novels, electronic cartoons provided in downloadable and online format, and the transmission, streaming, and rental thereof.
The attached dictionary entries shows the word WEBTOON is defined in http://www.lexico.com/en/definition/webtoon as “an animated cartoon or series of comic strips published online” and on http://www.yourdictionary.com/webtoon as “an animated cartoon published on the World Wide Web.” The attached Wikipedia entry further explains,
Webtoons (Hangul: 웹툰) are a type of digital comics that originated in South Korea. While webtoons were mostly unknown outside of the country during their inception, there has been a surge in popularity internationally thanks in great part to most manhwa being read on smartphones.
http://en.wikipedia.org/wiki/Webtoon.
In addition, the attached evidence from LEXISNEXIS consisting of a search of U.S. newspapers for the term “webtoon” shows that it is commonly used to refer to online cartoons and comic strips. See LEXISNEXIS search results, including articles from the Washington Post, New York Times, San Diego Union Tribune, and Hawaii Tribune-Herald.
Therefore, the plain meaning of the term WEBTOON immediately tells the customer that the goods and services are cartoons and comic strips that are published on the Internet and that they are a feature of the streaming, transmission and rental services that applicant renders.
Registration on the Principal Register is accordingly refused pursuant to Section 2(e)(1) of the Trademark Act.
Generic Mark Advisory
Please note the following additional ground for refusal.
Specimen Refusal—International Classes 38 and 41
The specimens are accepted for the goods in International Class 9.
Specifically, the specimen clearly shows the mark used in connection downloadable cartoons via the application software specimen. However, the website does not show the mark in connection with any services in Class 41, specifically nondownloadable cartoons or comic strips. The website merely shows the mark in connection with waiver and contractual language.
Moreover, the applicant’s application software and software services doesn’t automatically show that the applicant itself is providing the telecommunication services in Class 38. More likely, the telecommunications are provided by another company. Therefore, applicant must show evidence that they are the actual provider of the telecommunications.
Thus, registration is refused because the mark is not shown in connection with the identified services in International Classes 38 and 41.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Identification of Goods
The identification of services in International Classes 38 and 41 are accepted.
The identification for “Computer software for viewing electronic cartoons provided on the internet” in International Class 9 is indefinite and too broad and must be clarified to specify 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. See TMEP §1402.03(d).
Applicant may substitute the following wording, if accurate:
International Class 9: Downloadable comic books, graphic novels, electronic cartoons; Downloadable software applications for viewing electronic cartoons provided on the internet for smartphones and tablet personal computers; Downloadable computer software for viewing electronic cartoons provided on the internet; Downloadable electronic books and magazines in the field of cartoons
International Class 38: Streaming of audio, visual and audiovisual material via a global computer network; Transmission of data, audio, video and multimedia files, including downloadable files and files streamed over a global computer network; Video and audio streaming services, namely, streaming of audio and video material on the Internet; Electronic transmission of images and photographs via a global computer network; Transmission of pictures, images, text, photos, user-generated content, audio content, and information via the Internet; Transmission, broadcasting and reception of audio, video, still text and data in real time via telecommunication means
International Class 41: Providing online non-downloadable comic books; Providing on-line non-downloadable cartoon strips and comic books; Providing on-line non-downloadable cartoon strips and comic books available on mobile phones and tablet personal computers; On-line publication of non-downloadable electronic cartoon strips and comic books; Rental of non-downloadable electronic cartoon publications via the internet; Providing non-commercial, non-business ratings and review information and updates thereof by genre by analyzing the number of user clicks for online electronic cartoon publications, namely, books, magazines and journals via the internet; Providing online syndicated animated cartoons
International Class 42: Providing temporary use of non-downloadable computer software for viewing electronic cartoons provided on the internet
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
(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 four classes; however, applicant submitted a fee(s) sufficient for only three 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) 38, 41, and 42. See more information about specimens.
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.
Response Guidelines
For this application to proceed further, 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
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
/April A. Hesik/
Examining Attorney
Law Office 124
(571) 272-4735
april.hesik@uspto.gov
RESPONSE GUIDANCE