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:  March 06, 2020

 

INTRODUCTION

This Office action is supplemental to and supersedes the previous Office action issued on September 19, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new issue: amendment to identification of services required.  See TMEP §§706, 711.02. 

 

In a previous Office action dated September 19, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  failure to function in Class 45 and failure to show the applied-for mark in use in commerce with any of the specified services in Class 45. 

 

Based on applicant’s response, the trademark examining attorney notes that the following refusals are CONTINUED AND MAINTAINED: failure to function in Class 45 and failure to show the applied-for mark in use in commerce with any of the specified services in Class 45.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•        NEW ISSUE:  IDENTIFICATION OF SERVICES

•        Continued and Maintained: SECTIONS 1, 2, 3, AND 45 REFUSAL – FAILURE TO FUNCTION

•        Continued and Maintained: REGISTRATION REFUSAL – UNACCEPTABLE SPECIMEN

•        Partial Abandonment Advisory

 

 

IDENTIFICATION OF SERVICES

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The identification of services is unacceptable and must be clarified because it contains indefinite wording and the applicant must indicate the services with more particularity. For example, adding the wording “including music performance and programming” to the services makes it unclear the specific services that are being offered.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording (with added wording bolded), if accurate: 

 

Class 35: Promoting public awareness of gender equality; promoting public awareness by means of public advocacy of gender equality; promoting the interests of gender equality in advertising and multi-media programming, including promoting music performance and programming, featuring the compilation and tracking of advertising and programming data to measure change and progress

 

Class 41: Providing websites and social media sites featuring information in the field of gender equality featuring social research and commentary on the impact of gender on opportunity in advertising and multi-media programming, including information about music performance and programming, for entertainment purposes; providing entertainment news information and commentary in the field of gender equality and gender bias in the fields of advertising and multi-media programming, including music performance and programming; providing educational programs, non-downloadable videos, online publications in the nature of blogs, newsletters, magazines and periodicals in the field of gender equality and gender bias in advertising and multi-media programming

 

Class 45: Online social networking services in the field of gender equality in advertising and multi-media programming, including social networking in the field of music performance and programming

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  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.

 

 

TRADEMARK ACT SECTIONS 1, 2, 3, & 45 REFUSAL – FAILURE TO FUNCTION

THIS PARTIAL REFUSAL APPLIES TO CLASS 45 ONLY

 

Registration is refused because the applied-for mark, as used on the specimen of record, is used merely as a hashtag for online social media and does not function as a trademark or service mark to indicate the source of applicant’s services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§1202, 1202.18; cf. In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009) (holding that the addition of a top-level-domain to an otherwise unregistrable mark does not typically add any source-identifying significance).   While the applicant has provided another specimen, the additional specimen also shows the mark only used as a hashtag and does not show servicemark usage.

 

A “hashtag” consists of a word or phrase preceded by the hash symbol or pound sign “#” (e.g., #chicago, #sewing, and #supremecourtdecisions) or by the term “hashtag” (e.g., hashtag skater).  TMEP §1202.18.  Hashtags are used on social-networking sites to identify or search for a keyword or topic of interest.  Id.

 

In the present case, the specimen shows the applied-for mark used only as a hashtag in that it only appears in small lettering below other wording or after main wording showing that it is simply identifying keywords on social-networking sites. 

 

Therefore, the mark consists only of wording coupled with the hash symbol (#) or term “hashtag,” and, as used on the specimen of record, would be perceived merely as a hashtag for searching online social media, and not as a trademark or service mark for particular goods and/or services.

 

 

REGISTRATION REFUSAL – UNACCEPTABLE SPECIMEN

THIS PARTIAL REFUSAL APPLIES TO CLASS 45 ONLY

 

Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class(es) 45.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of 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). 

 

Specifically, the specimen shows the mark in connection with the social networking services of Twitter® and Facebook® and therefore does not show that the applicant is providing social networking services for others, rather that the applicant is making use of the social networking services of others. Merely using the social networking services of others does not show the use of social networking services by the applicant for the applicant’s users. Applicant’s additional specimen provided in the Response to Office Action dates February 16, 2020 shows the same issue and is still not an acceptable specimen. Additionally, the applicant’s substitute specimen did not include the URL and date it was accessed and is therefore unacceptable.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

Response options.  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 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) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage. 

 

 

Partial Abandonment Advisory

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Classes 35, 41, and 45 will be deleted from the application:

 

Class 35: promoting the interests of gender equality in advertising and multi-media programming, including music performance and programming, featuring the compilation and tracking of advertising and programming data to measure change and progress

 

Class 41: Providing websites and social media sites featuring information in the field of gender equality featuring social research and commentary on the impact of gender on opportunity in advertising and multi-media programming, including music performance and programming, for entertainment purposes

 

Class 45: all services in this class

 

The application will then proceed with the following goods and/or services in International Class 35 and 41 only: 

 

 

Class 35: Promoting public awareness of gender equality; promoting public awareness by means of public advocacy of gender equality

 

Class 41: providing entertainment news information and commentary in the field of gender equality and gender bias in the fields of advertising and multi-media programming, including music performance and programming; providing educational programs, non-downloadable videos, online publications in the nature of blogs, newsletters, magazines and periodicals in the field of gender equality and gender bias in advertising and multi-media programming

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

If the applicant has any questions or requires assistance in responding to this Office Action, please contact the assigned examining attorney.

 

 

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

 

 

/Stephanie Rydland/

Stephanie Rydland

Examining Attorney

Law Office 130

(571) 272-7226

Stephanie.Rydland@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 March 06, 2020 for

U.S. Trademark Application Serial No. 88495071

 

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. 

 

 

/Stephanie Rydland/

Stephanie Rydland

Examining Attorney

Law Office 130

(571) 272-7226

Stephanie.Rydland@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 March 06, 2020, 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.”