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:  October 01, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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 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).

 

SUMMARY OF ISSUES:

• Amended Identification of Goods Required
• Foreign Registration Required

 

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

The wording “video discs” in the identification of goods is indefinite and must be clarified because it is not clear they are digital video discs.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “downloadable music” in the identification of goods is indefinite and must be clarified because it is not clear it refers to downloadable music files.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “film and television series” in the identification of goods is indefinite and must be clarified because the subject matter of the films and television series is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “downloadable shows” in the identification of goods is indefinite and must be clarified because it is not clear that applicant’s means television shows.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “software for playing games” in the identification of goods is indefinite and must be clarified because it is not clear that the software is downloadable and for computers.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “downloadable software in the nature of a mobile application for playing games and accessing entertainment content for computers . . . ” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  First applicant must specify that it is also a desktop application, which is the type of application that can be used on computers. Additionally, application must specify the way in which the additional content is accessed, e.g. via watching videos.

 

The wording “computer game software” in the identification of goods is indefinite and must be clarified because it is not clear that is the software is downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “eyewear, eyeglasses…” in the identification of goods is indefinite and must be clarified because it is not that the eyeglasses and following items are the types of eyewear that applicant sells.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If applicant also sells additional types of eyewear, each type must be specifically named and included.

 

The wording “wireless communication devices and systems for computer software” in the identification of goods is indefinite and must be clarified because it the nature of the systems for computer software is not clear.  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.  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.  See id.

 

Applicant may substitute the following wording, if accurate (changes in bold):

 

Class 009: Prerecorded digital video discs and DVDs featuring motion pictures, television series or other short form entertainment programs in the nature of comedy, drama, news, reality and variety content; prerecorded optical and magneto-optical discs featuring music, motion pictures, television programs or other short form entertainment programs in the nature of comedy, drama, news, reality and variety content; prerecorded CDs featuring music and motion picture sound tracks; downloadable music files, films and television series featuring {indicate subject matter, e.g. children’s entertainment} provided via a video-on demand service; downloadable television shows featuring television and short form programs and motion pictures in the nature of comedy, drama, news, reality and variety content; interactive multi-media downloadable computer software for playing games; downloadable software in the nature of a mobile and desktop application for playing games and accessing entertainment content via {indicate way in which content is accessed, e.g. watching videos} for use with computers, portable handheld digital electronic communication devices, mobile devices and wired and wireless communication devices; downloadable computer game software for wireless and electronic mobile devices, mobile phones and hand-held electronic devices; computer game discs; video game discs; eyewear, namely, eyeglasses, sunglasses and cases therefor; decorative magnets; cinematographic machines and apparatus; wireless communication devices and systems for computer software for the transmission of audio, voice and images; Downloadable computer software systems for the transmission of audio, voice and images; downloadable animated cartoons; electronic publications, downloadable, namely, magazines and books in the field of entertainment

 

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.

 

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

 

RESPONDING TO THIS 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.

 

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  

 

/Carolyn R. Detmer/

Carolyn R. Detmer

Examining Attorney

Law Office 127

571-272-2722

carolyn.detmer1@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 October 01, 2019 for

U.S. Trademark Application Serial No. 88506571

 

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. 

 

 

/Carolyn R. Detmer/

Carolyn R. Detmer

Examining Attorney

Law Office 127

571-272-2722

carolyn.detmer1@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 October 01, 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.”