Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 02, 2019

 

This Office action is in response to applicant’s communication filed on September 16, 2019.

 

The requirement for an acceptable identification of services is made final.

 

IDENTIFICATION OF SERVICES - PARTIAL FINAL REQUIREMENT

 

The requirement for an acceptable identification of services is made final, in part.

 

Portions of the identification of services remains indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, as further discussed below, some of the services are unacceptable because they exceed the scope of the wording in the original identification of services. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

Specifically, in International Class 38, the wording “telecommunication services, namely, electronic transmission and streaming of audio, video, graphics, text and data via the Internet and broadband systems of information regarding eSports, eSports competitions, fan events in the field of eSports and videogames” is indefinite and exceeds the scope of the original identification.

 

Regarding scope, the “electronic transmission” services in the original wording were limited to “information” as a subject matter, therefore, the amended wording must also be limited to information. The applicant must also clarify the nature of the matter being streamed and transmitted.

 

In International Class 41, the wording “production of television programs in the fields of eSports, eSports competitions, fan events in the field of eSports and videogames, said programs being in a format intended for provision multiple forms of transmission media” exceeds the scope of the original language.

 

Specifically, in original application, these services were limited to those pertaining to content to be provided in a non-downloadable format and via video on demand transmission. Extending this wording to the production of content intended for “provision multiple forms of transmission media” is broader than the original means of transmission. It is noted that this wording is also indefinite because it appears to feature a typo in that a word between “provision” and “multiple” is missing.

 

Applicant may adopt the following identification, if accurate: 

 

“television broadcasting services; transmission of television programs; cable television broadcasting services; streaming of audio, visual and audiovisual material on the internet; telecommunication services, namely, electronic transmission and streaming of audio, visual and audiovisual files featuring information regarding eSports, eSports competitions, fan events in the field of eSports and videogames, said services provided via the Internet and broadband systems,” in International Class 38;

 

“entertainment services in the nature of ongoing television programs in the fields of eSports, eSports competitions, fan events in the field of eSports and videogames distributed via various platforms across multiple forms of transmission media; production of television programs in the fields of eSports, eSports competitions, fan events in the field of eSports and videogames, said programs being in a format intended for provision via video-on-demand in a non-downloadable format; providing on-line entertainment information, namely, information about television programming,” in International Class 41.

 

Additions Not Allowed: 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).

 

Trademark ID Manual: 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.

 

 

 

 

PARTIAL FINAL REFUSAL RESPONSE GUIDELINES

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final requirements apply will be deleted from the application by Examiner’s Amendment:    

 

International Class 38:

 

Telecommunication services, namely, electronic transmission and streaming of audio, video, graphics, text and data via the Internet and broadband systems of information regarding eSports, eSports competitions, fan events in the field of eSports and videogames.

 

International Class 41:

 

Production of television programs in the fields of eSports, eSports competitions, fan events in the field of eSports and videogames, said programs being in a format intended for provision multiple forms of transmission media.

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the remaining services only. 

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Martha L. Fromm/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 106

571-272-9320

Martha.Fromm@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 02, 2019 for

U.S. Trademark Application Serial No. 88514969

 

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. 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 106

571-272-9320

Martha.Fromm@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 02, 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.”