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)      Specimen refusal.

 

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 podcasts; Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet

 

Class 41

 

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

 

• Amending “continuing continuing” to show the wording “continuing” once.
• Amending “delivered primarily via 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 references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

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

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for Classes 35 and 41.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

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

 

3)      Specimens for Classes 9 and 38

 

A.      Introduction

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website.  Such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website.   See In re Azteca Sys., Inc., 102 USPQ2d 1955 (TTAB 2012). If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable.   See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); see also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007).  See TMEP §904.03(i) regarding electronic displays as specimens for trademarks.  TMEP §904.03(e).

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

B.      Specimen for Class 9 Fails to Show the Goods are Downloadable

 

Registration is refused as to Class 9 because the specimen does not show the applied-for mark in use in commerce in connection with any of the Class 9 goods in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the goods in Class 9 are “downloadable mobile applications for podcasts and other audio-based or audio-visual content about multiple subjects.” 

 

For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website.  However, as noted above, such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website.   In re Azteca Sys., Inc., 102 USPQ2d at 1955.  See TMEP §904.03(e).

 

The specimen shows the mark in screen shots from the Apple®/iTunes® website where podcasts may be obtained and listened to.  It is clear from the specimen that 1) podcasts are provided under the applied-for mark, and 2) such podcasts may be purchased via the Apple® “store.”   To the extent a software application is displayed in the specimen, it appears to be an app for the iTunes®/Apple® website using the Apple logo.

 

However, there is no download button shown on the specimen nor is there anything on the specimen that verifies anything is downloadable.  Thus, it is unclear from the specimen that applicant is using its mark with a mobile application or any downloadable goods. 

 

C.      It Does Not Appear that the Mark is Used with the Class 38 Services

 

The Class 38 services are as follows:

 

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

 

These services involve the providing of the telecommunications services/connections that enable content to be broadcast or transmitted.  In this case, the specimens do not appear to establish that applicant is itself providing telecommunications services like those listed in Class 38.  It is clear that applicant is a “publisher” or provider of content.  However, it is not clear from the specimens that applicant is a telcom provider that is separately providing broadcasting or transmission capabilities like those listed in the application. 

 

Moreover, it, at best, appears from the specimens that the programs applicant provides are actually transmitted/broadcast, at least in part, by iTunes® or Apple®.  In this regard, it appears that it is the technology and connections available via using iTunes® that enables content to be broadcast or transmitted.

 

D.    Responding

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

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  

 

Please 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. 88592664

 

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.”