To: | VROOM, INC. (dwong@btlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88491407 - VROOM - 71261-297103 |
Sent: | September 30, 2019 08:51:25 AM |
Sent As: | ecom122@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88491407
Mark: VROOM
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Correspondence Address:
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Applicant: VROOM, INC.
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Reference/Docket No. 71261-297103
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: September 30, 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.
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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 ISSUES:
REQUIREMENT – AMEND IDENTIFICATION OF GOODS
The wording “computer software and mobile device software for creating, managing, organizing, displaying, tagging, bookmarking, storing, sharing or
otherwise providing electronic media or information over the Internet or other communications network” and “computer software and mobile device software for creating, managing, organizing,
displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media information about vehicles for sale, namely, vehicle specifications, selection, availability, pricing,
vehicle comparisons, valuations, and providing photographs of vehicles” in the identification of goods is indefinite and must be clarified because the wording does not specify the nature of the goods
and the wording “otherwise” does not specify the purpose and/or function of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “{specify downloadable or recorded} computer software and downloadable mobile device software for creating, managing, organizing, displaying, tagging, bookmarking, storing,
sharing and otherwise {specify function/purpose} providing electronic media and information over the Internet or other communications network” and
“{specify downloadable or
recorded} computer software and mobile device software
for creating, managing, organizing, displaying, tagging, bookmarking, storing, sharing and otherwise {specify function/purpose} providing electronic media information about
vehicles for sale, namely, vehicle specifications, selection, availability, pricing, vehicle comparisons, valuations, and providing photographs of vehicles.”
The wording “computer software and mobile device software to allow users to perform electronic business transactions via a global computer network; computer software and mobile device software for online retail store services featuring a variety of consumers goods of others” in the identification of goods is indefinite and must be clarified because the wording does not specify the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “{specify downloadable or recorded} computer software and downloadable mobile device software to allow users to perform electronic business transactions via a global computer network; {specify downloadable or recorded} computer software and downloadable mobile device software for online retail store services featuring a variety of consumers goods of others.”
The wording “computer software and mobile device software to e-commerce software to allow users to perform electronic business transactions via a global computer network; computer software and mobile device software to e-commerce software to allow users to purchase and sell vehicles via a global computer network” in the identification of goods is indefinite and must be clarified because the wording does not specify the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “{specify downloadable or recorded} computer e-commerce software and downloadable mobile device e-commerce software to allow users to perform electronic business transactions via a global computer network; {specify downloadable or recorded} computer e-commerce software and downloadable mobile device e-commerce software to allow users to purchase and sell vehicles via a global computer network.”
Applicant has included the term “and/or” or “or” in the identification of goods. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Applicant may substitute the following wording, if accurate:
Class 9: {specify downloadable or recorded} computer software and
downloadable mobile device software for creating, managing, organizing, displaying, tagging, bookmarking, storing, sharing and otherwise {specify function/purpose}
providing electronic media and information over the Internet or other communications network; {specify downloadable or recorded} computer software and downloadable mobile device
software to allow users to perform electronic business transactions via a global computer network; {specify downloadable or recorded} computer software and downloadable mobile device
software for online retail store services featuring a variety of consumers goods of others; {specify downloadable or recorded} computer e-commerce software and downloadable
mobile device e-commerce software to allow users to perform electronic business transactions via a global computer network; {specify downloadable or recorded} computer e-commerce
software and downloadable mobile device e-commerce software to allow users to purchase and sell vehicles via a global computer network; {specify downloadable or recorded}
computer software and mobile device software for creating, managing, organizing, displaying, tagging, bookmarking, storing, sharing and otherwise {specify function/purpose}
providing electronic media information about vehicles for sale, namely, vehicle specifications, selection, availability, pricing, vehicle comparisons, valuations, and providing photographs of
vehicles
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.
REQUIREMENT – AMEND COLOR CLAIM AND MARK DESCRIPTION
Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is. TMEP §807.07(a)(i)-(a)(ii), (c). Additionally, the colors in the drawing, color claim, and description must match. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.
To clarify the colors in the mark, applicant may satisfy one of the following:
(1) Submit a new color drawing that shows the mark in the colors specified in the color claim and description. TMEP §807.07(c). However, any other amendments to the drawing will not be accepted if they would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.
(2) Submit an amended color claim and description that matches the colors in the drawing. Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested:
Color claim: “The colors red and white are claimed as a feature of the mark.”
Description: “The mark consists of the word "VROOM" in white displayed in stylized font displayed on a red background.”
For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
ASSISTANCE
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
Calloway, Christina
/Christina Calloway/
Examining Attorney
Law Office 122
571-272-7342
christina.calloway@uspto.gov
RESPONSE GUIDANCE