To: | Digital Essentials (zendarius@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88578862 - DIGITAL ESSENTIALS - N/A |
Sent: | November 14, 2019 05:13:17 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88578862
Mark: DIGITAL ESSENTIALS
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Correspondence Address:
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Applicant: Digital Essentials
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Reference/Docket No. N/A
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: November 14, 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.
Search for Conflicting Marks
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).
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 the wording “DIGITAL” because it is not inherently distinctive. These unregistrable term(s) at best 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).
This word is descriptive in connection to applicant’s services, because applicant provides digital marketing and strategy services as well as other web related services. As evidence that “DIGITAL” is descriptive, attention is directed to applicant’s own identification of goods/services in which applicant has used the term “digital” in a descriptive manner. Thus, the wording merely describes a feature or type of applicant’s services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DIGITAL” 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.
Identification of Goods/Services
The identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
The identification of goods/services is indefinite because it is overbroad and includes services that could be classified in multiple classes. Applicant must amend the wording to definite wording. If applicant wishes to add the additional classes, applicant must pay additional filing fees. Or applicant may amend the wording to services in one class and delete services in other classes.
The following services are unclear and must be clarified: SEO, Web and Technical Integration, AI integration, Data Analytics, Data Reporting, Predictive Analytics, User Experience Design.
Applicant may adopt the following wording, if accurate:
Class 009 Downloadable software for connecting, operating, and managing networked {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.} in the internet of things (IoT)
Class 035 Development of marketing strategies, namely, audience development, brand awareness, online community building and digital word of mouth communications; Design and production of the advertising content of banners and signs for marketing purposes
Class 041 Music Composition for others; music production services; Educational Technology, Training; Photography
Class 042 Website Design and Development for others; Application service provider featuring application programming interface (API) software for {specify the function of the API programs, e.g., integration of video content into websites}; Research in the field of artificial intelligence and the integration of artificial intelligence into society; Design and development of computer game software and virtual reality software; Design and development of software in the field of mobile applications; Development and design of digital sound and image carriers; Providing temporary use of non-downloadable cloud-based software for connecting, operating, and managing networked {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.} in the internet of things (IoT); Graphic Design; Computer graphics design services, namely, creating of 3D computer models
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.
Multi-Class Application 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 are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 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.
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
/W. Wendy Jun/
W. Wendy Jun
Examining Attorney
Law Office 103
wendy.jun@uspto.gov
RESPONSE GUIDANCE