To: | Dinamo GmbH (trademarks@patentusa.com) |
Subject: | U.S. Trademark Application Serial No. 88598353 - INTERNATIONAL - T-11226 |
Sent: | December 04, 2019 01:36:09 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88598353
Mark: INTERNATIONAL
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Correspondence Address:
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Applicant: Dinamo GmbH
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Reference/Docket No. T-11226
Correspondence Email Address: |
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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: December 04, 2019
SEARCH RESULTS
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s applied-for mark is “INTERNATIONAL” for:
“Information technology products, namely, Displays and Screens; software for end users to design fonts and software for development of fonts; parts and accessories for all aforementioned goods, namely, Software Extensions and Plugins” in Class 9;
“Paper, Printing Fonts and Typeface Font Software fonts, Typographic pencils, brushes and stencils to draw type, paper and cardboard; paper models for art, namely, architectural models; paper and paper supplies for use in painting, drawing and paper sculpture, namely, Calligraphy and type writing tools and instruction manuals to write and draw type; paper and writing materials for teachers and instructors, namely, Calligraphy and type writing tools and instruction manuals to write and draw type” in Class 16;
“Manufacturing of typesetting supplies for print shops; development of film in the field of photography and cinematography; duplication of audio and video recordings; distribution, renting and leasing of Printing Fonts and Typeface Font Software to the end user / Digital files of printing fonts and typeface font software in the field of printing, cinematography and photography; consultation services in the field of printing, cinematography and photography” in Class 40;
“Educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services, namely, holding seminars and workshops in the field of printing and graphic design” in Class 41 and
“Design and development of printing fonts for use in printing and on computer interfaces; IT-services, namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control in print shops; graphic design services Streaming and on-Demand delivery of Printing Fonts and Typeface Font Software to the end user; Font Software Renting Services; Product development of typesetting supplies for print shops” in Class 42.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Thus, in this case, the term “INTERNATIONAL” merely describes the geographic scope of applicant’s various printing goods and services.
Therefore, registration is refused pursuant to Trademark Act Section 2(e)(1).
IDENTIFICATION OF GOODS AND SERVICES
The wording “distribution, renting and leasing of Printing Fonts and Typeface Font Software to the end user / Digital files of printing fonts and typeface font software in the field of printing, cinematography and photography” is indefinite and potentially misclassified because the particular nature of the services are unclear. Renting of software would be classified in Class 42. Transimission of digital content would be classified in Class 38. Downloadable software would be classified in Class 9. Thus, applicant must clarify the nature and purpose of the goods and/or services to determine appropriate classification.
Applicant may substitute the following wording, if accurate:
Class 9: Information technology products, namely, {clarify nature of displays, e.g. liquid crystal} displays and {clarify nature of screens, e.g. computer} screens; downloadable software for end users to design fonts and downloadable software for development of fonts; parts and accessories for all aforementioned goods, namely, downloadable software extensions and plugins; typeface font and software fonts, namely, typeface fonts recorded on magnetic media
Class 16: Paper, Printing Fonts and Typeface Font Software fonts, Typographic pencils, brushes and stencils to draw type, paper and
cardboard; paper models for art, namely, architectural models; paper and paper supplies for use in painting, drawing and paper sculpture, namely, Calligraphy and type writing tools in the nature of {specify, e.g. ink and writing brushes} and instruction manuals to write and draw type; paper and
writing materials for teachers and instructors, namely, Calligraphy and type writing tools in the nature of {specify, e.g. ink and
writing brushes} and instruction manuals to write and draw type
Class 38: Electronic transmission of digital media content for others via global and local computer networks, namely, streaming and on-demand delivery of printing fonts and typeface font software to the end user
Class 40: Manufacturing of typesetting supplies for print shops; development of film in the field of photography and cinematography; duplication of audio and
video recordings; distribution, renting and leasing of Printing Fonts and Typeface Font Software to the end user / Digital files of printing fonts and typeface font software in the
field of printing, cinematography and photography; consultation services in the field of printing, cinematography and photography
Class 41: Educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services, namely, holding seminars and workshops in the field of printing and graphic design; consultation in the field of cinematography and photography
Class 42: Graphic design, namely, design and development of printing fonts for use in printing and on computer interfaces; IT-services,
namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control
in print shops; graphic design services Streaming and on-Demand delivery of Printing Fonts and Typeface Font Software to the end user; Font Software Renting Services; Product
development of typesetting supplies for print shops; renting and leasing of Typeface Font Software to the end user; provision of online, non-downloadable typeface font software in
the field of printing, cinematography and photography
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 5 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
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 44:
(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 6 classes; however, applicant submitted a fee(s) sufficient for only 5 classes. 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Karen Sulita Dindayal/
Examining Attorney
Law Office 117
571-272-8208
karen.dindayal@uspto.gov
RESPONSE GUIDANCE