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 22, 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).

 

Identification of Goods and/or Services Amendment Requirement

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Here, the wording specified below in the identification of goods and/or services must be clarified because it is too broad and could include goods and/or services in other international classes.  See TMEP §§1402.01, 1402.03.

 

For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below. The applicant may adopt following wording, if accurate, because it is sufficiently definite and properly classified:

 

“Computer storage apparatus, namely, {specify by common commercial name, e.g., “blank flash drives”}; computer apparatus, namely, {specify by common commercial name, e.g., “blank flash drives”}; recorded computer programs, namely, {specify by common commercial name, e.g., “recorded computer game programs”}; recorded computer operating programs; computer peripheral equipment; computer software, namely, {specify by common commercial name, e.g., “recorded computer game programs”}; recorded computer software, namely, {specify by common commercial name, e.g., “recorded computer game programs”}; computer hardware, namely, monitors; computer monitoring apparatus, namely, {specify by common commercial name, e.g., “computer monitors”}; computer monitoring instruments, namely, {specify by common commercial name, e.g., “downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}”}; data processing equipment, namely, {specify by common commercial name, e.g., “couplers”}; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; downloadable software, namely, computer programs, namely, {specify by common commercial name, e.g., “recorded computer game programs”}; downloadable music files; downloadable image files containing {indicate content or subject matter}; time recording apparatus; electronic timers; measuring apparatus and instruments, namely, {specify by common commercial name, e.g., “rain gauges”}; electronic bulletin board apparatus, namely, {specify by common commercial name, e.g., “electronic text-messaging device for use in conjunction with personal digital assistants”}; telegraphic apparatus, namely, {specify by common commercial name, e.g., “telegraphic transmitting apparatus”}; video receivers; sound recording devices, namely, {specify by common commercial name, e.g., “recording and playing devices for sound and image carriers”}; recording devices for sound and image carriers; portable media players; video recording apparatus; batteries; battery chargers; regulated power supply apparatus; on-off sensors; light regulators, electric; light dimmers, electric; electric connections, namely, plugs, sockets and other contacts; temperature indicators; electric sensors; meters; instruments for measuring pressure; batteries for electronic cigarettes; rechargeable batteries for electronic cigarettes; battery chargers for electronic cigarettes; chargers for electronic cigarettes; battery chargers for electronic devices that are used for heating tobacco; USB chargers for electronic devices that are used for heating tobacco,” in International Class 9;

 

“Ashtrays; cigarette filters; cigarette holders; cigarettes; cigarettes containing tobacco substitutes not for medical purposes; electric cigarettes; flavorings, other than essential oils, for tobacco; flavourings, other than essential oils, for use in electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; matches; oral vaporizers for smokers; tobacco pipes; cigarette boxes; herbs for smoking; lighters for smokers,” in International Class 34;

 

“Advertising; advertising agency services; online advertising on a computer network; presentation of goods on communication media, for retail purposes; placing of advertisements; preparation of advertisements; cost analysis; business information agency services; business management and organization consultancy; market analysis; business evaluation services; business research; provision of business information; arranging exhibitions for commercial purposes; arranging exhibitions for advertising purposes; commercial information and advice for consumers; consumer advice shop; provision business of assistance in the establishment of franchises; administration of the business affairs of franchises; import and export agencies; on-line trading services in which seller posts products to be auctioned and bidding is done via the Internet marketing; arranging and concluding commercial transactions for others; computer file management; data processing; compilation of information into computer databases; database management; data retrieval; accounting; account auditing; sponsorship search, promotion, and retail store services and online retail store services in the field of heated tobacco products, electronic cigarettes, electronic smoking devices, electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation, oral vaporizing devices, vaporizers for electronic cigarettes and smoking devices, electronic rechargeable cigarette cases, extinguishers for heated cigarettes and cigars as well as heated tobacco sticks, liquid nicotine solutions for use in electronic cigarettes, tobacco substitutes not for medical purposes, smokers' articles, batteries for electronic cigarettes and for heating portable electronic smoking devices, battery chargers, chargers for electronic devices, and parts and fittings for the aforementioned goods,” in International Class 35;

 

“Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among internet users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information via {specify, e.g., “electronic communications networks”}; Providing online forums for communication on topics of general interest, namely, {specify the field more specifically}; Providing online chat rooms, e-mail and instant messaging services, and electronic bulletin boards for transmission of messages among users in the field of general interest; Audio, text and video broadcasting services over the Internet or other communications networks featuring the uploaded, posted, displayed, modified, tagged, and electronically transmitted data, information, audio and video content of others; Voice over IP services; Telephony communication services,” in International Class 38;

 

“Providing use of online temporary non-downloadable software for enabling transmission of images and audiovisual and video content; hosting on-line web facilities as websites and mobile sites for others for managing and sharing on-line content; providing information from searchable indexes and databases of information, namely, {specify by common commercial name, e.g., “collection and compilation of information into computer databases in the field of {specify field or subject matter}”}; providing search engines for obtaining data via communications networks, namely, {specify by common commercial name, e.g., “provision of search engines for the Internet”}; computer services, namely, creating virtual communities for registered users to participate in discussions and engage in social, business and community networking, namely, {specify by common commercial name, e.g., “computer services, namely, creating an on-line community for registered users to {indicate the purpose of the online community, e.g., participate in discussions, get feedback from their peers, form virtual communities, engage in social networking}”}; computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks, namely, {specify by common commercial name, e.g., “computer services, namely, creating an on-line community for registered users to {indicate the purpose of the online community, e.g., participate in discussions, get feedback from their peers, form virtual communities, engage in social networking}”}; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks, namely, {specify the feature of the software services more precisely}; providing an online network service that enables users to transfer personal identity data to and share personal identity data with and among multiple websites, namely, {specify by common commercial name, e.g., “computer services, namely, creating an on-line community for registered users to {indicate the purpose of the online community, e.g., participate in discussions, get feedback from their peers, form virtual communities, engage in social networking}”}; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information in the nature of personal profiles, audio, video, photographic images, text, graphics and data; updating of computer software, namely, {specify by common commercial name, e.g., “providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other web sites”}; conversion of data or documents from physical to electronic media,” in International Class 42.

 

See TMEP §1402.01.

 

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.

 

General Inquiry on Significance

 

Applicant must explain whether “RELXME” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  Applicant must also explain whether this wording identifies a geographic place, or has a meaning in a foreign language.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

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  

 

 

Jimmy Stein

/jws/

Jimmy Stein

Examining Attorney

United States Patent and Trademark Office

james.stein@uspto.gov

571-272-3056

 

 

 

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 22, 2019 for

U.S. Trademark Application Serial No. 88592461

 

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. 

 

 

Jimmy Stein

/jws/

Jimmy Stein

Examining Attorney

United States Patent and Trademark Office

james.stein@uspto.gov

571-272-3056

 

 

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 22, 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.”