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 11, 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.

 

SUMMARY OF ISSUES:

 

1)      Requirement for clarification of the identification of goods and services.

2)      Requirement for compliance with the multiple-classification requirements.

3)      Requirement for a disclaimer.        

 

**Applicant is invited to call the examining attorney to attempt to quickly resolve the issues below.**

 

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).

 

However, applicant must respond to the following refusal(s) and/or requirement(s).

 

1)      Identification of Goods/Services

 

The identification of services in Class 35 is acceptable.  However, some of the wording in the remaining classes in the identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant also must adopt the appropriate international classification number for the goods and/or services identified in the application.  The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Clasification), established by the World Intellectual Property Organization, to classify goods and services.  See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a). 

 

Each class is addressed separately below.

 

Class 9

 

The identification must be clarified to specify the function of the software/mobile applications.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Here, applicant kindly specified the field(s) that the software goods/mobile applications are used for, but the particular function(s) of the mobile applications has/have not yet been identified.  Thus, clarification is required.

 

In addition, “or” must be replaced with definite, all-inclusive wording.

 

Applicant may adopt one or both of the following wording for Class 9, if accurate: 

 

Downloadable mobile applications for playing podcasts, audio-based online content, and audio-visual online content about multiple subjects

 

Downloadable mobile applications for podcasts and other audio-based or audio-visual content about multiple subjects, namely, software for use in _____________ [specify particular function(s), e.g., streaming podcasts, audio-based content, and audio-visual content online]

 

Class 38

 

“Broadcasting of podcasts, video-on-demand, television and radio programs” is slightly awkward with respect to “video-on-demand.”  In this regard, applicant used a fill-in-the-blank identification from the Office’s U.S. Acceptable Identification of Goods and Services Manual that read as “broadcasting of ____________ programs” where applicant needed to fill in the blank with the type of programs.  Because “podcasts” is plural, it would be odd to read “programs” to refer back to podcasts.”  However, “broadcasting of podcasts” is definite and acceptable.  Similarly, “broadcasting of television and radio programs” is definite. 

 

It is just unclear if, as written, “programs” in the identification relates back to “video-on-demand.”    Thus, clarification is required.  Applicant may simply add “programs” after “video-on-demand,” if accurate.  Otherwise, applicant must clarify what the video-on-demand content is, e.g., “motion pictures,” “television shows.”

 

Applicant may also choose to include “and” before “television.”

 

Applicant may substitute the following wording for Class 38, if accurate.

 

Broadcasting of podcasts, video-on-demand programs, and television and radio programs; Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Telecommunication services, namely, transmission of podcasts

 

Class 41

 

“Entertainment services, namely, the provision of continuing audiovisual and audio-only shows including podcasts featuring entertainment and non-fiction content delivered by primarily the Internet and television” requires clarification.   In particular, it must be amended by:

 

• Amending “delivered primarily by the Internet and television” to delete “primarily” and specifically identify the means by which the content is delivered.
• Classifying the goods/services properly.  Please note that, if the programs are downloadable programs provided online, then downloadable items are properly classified in Class 9.  Please also note that, to the extent applicant would be “delivering” the programs as hard goods via a service like a mail order service or similar ordering services, then such services would be properly classified in Class 35.
• Clarifying the general nature or subject matter of the “entertainment and non-fiction content” featured, e.g., featuring comedy, featuring information about entertainment, featuring current events news, featuring non-fiction content in the field of self-help, featuring non-fiction content in the field of genetics.

 

Applicant may also wish to delete the parentheses in “field(s).”

 

Applicant may substitute the following wording for Class 41, if accurate.

 

Entertainment services, namely, providing continuing audiovisual and audio-only shows including podcasts, all featuring information about entertainment and featuring non-fiction content in the nature of current events news delivered via the Internet, computer networks and television; Providing a website featuring entertainment information in the fields of podcasts and other audio-based or audio-visual content about multiple subjects, both scripted and fact-based

 

Applicant’s goods and/or 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 goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or 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.

 

2)      Multiple-classification Requirements

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that could be classified in at least five classes; however, applicant submitted a fee(s) sufficient for only four class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

3)      Disclaimer

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim “PODCASTING” because it is not inherently distinctive.  This/these unregistrable term(s) at best is/are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

In this regard, the attached definition establishes that “PODCASTING” refers to providing a type of program available over the Internet.  Applicant’s goods in Class 9 are for “podcasts and other audio-based or audio-visual content about multiple subjects” with the latter being broad so as to encompass content about podcasting.  The services in Class 35 are offered via “electronic media,” which would appears to include those being provided by podcasts or “via podcasting.”  The services in Class 38 either specifically indicate that they are podcast services or they are broadly identified and, therefore, presumed to include such services.  Similarly, the services in Class 41 either specifically indicate they are or are in the field of podcast services or they are broadly identified and presumed to include those in the field of or about podcasting.   Thus, “PODCASTING” merely describes a feature of the goods/services and must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PODCASTING” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Advisory

 

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  

 

Applicant is invited to call the examining attorney to attempt to quickly resolve the issues above (and avoid the need to submit a formal response online).  Please also do not hesitate to contact the undersigned with any questions.

 

/MaureenDallLott/

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

United States Patent and Trademark Office

571-272-9714

maureen.lott@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 11, 2019 for

U.S. Trademark Application Serial No. 88530141

 

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. 

 

 

Lott, Maureen D.

 

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 11, 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.”