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:  November 21, 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 of Office’s Database of 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).

 

Summary of Issues that Applicant Must Address

 

• Identification of Goods
• Identifications of Services
• Advisory – Partial Abandonment

 

Identification of Goods

The identification of goods is indefinite and must be clarified because the applicant must specify that the software is downloadable to maintain the goods in CLASS 9.  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 goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The following substitute wording is suggested, if appropriate:  (Note that proposed changes have been placed in bold type.  Some items require applicant to include more complete information.  These have been designated with braces{  } and/or bold type.  The information in the braces is suggested as an example for applicant to follow and should not be merely “cut and pasted.”):  

 

·       virtual, augmented and mixed reality downloadable software for navigating a virtual museum or art exhibition; downloadable virtual reality software for education, instruction and training in arts and culture; downloadable virtual reality software for experiencing, viewing and participating in entertainment, educational, promotional, arts and culture events; arranging of exhibitions for viewing in a virtual reality environment; downloadable virtual reality game software; downloadable augmented reality game software; downloadable mixed reality game software; virtual, augmented, and mixed reality downloadable software for use to provide virtual reality experiences; downloadable game software for wireless devices; downloadable game software for handheld electronic devices; electronic downloadable game software; video game software; downloadable interactive multimedia computer game programs; downloadable electronic game programs; computer game software; downloadable software for integrating electronic data with real world environments for the purposes of entertainment, education, gaming, communicating, and social networking; downloadable virtual reality software for navigating a virtual reality environment; downloadable augmented reality software for navigating an augmented reality environment, in INT. CLASS 9.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Identification of Services

 

The identification of services is indefinite and must be clarified because the services in INT. CLASS 35 may be classified in either CLASS 35 or CLASS 41 depending on the purpose of the exhibitions and events.  The term “experiences” in INT. CLASS 41 is vague and requires additional detail. The services “launching and marketing new street culture brands” are misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The following substitute wording is suggested, if appropriate:  (Note that proposed changes have been placed in bold type.  Some items require applicant to include more complete information.  These have been designated with braces{  } and/or bold type.  The information in the braces is suggested as an example for applicant to follow and should not be merely “cut and pasted.”):  

 

·       Arranging, organizing and conducting exhibitions and events for business and advertising purposes, in the fields of arts, culture, fashion, music and sports; Arranging, organizing and conducting exhibitions and events for business and advertising purposes in the field of digital multimedia recording; Arranging, organizing and conducting exhibitions and events for commercial, promotional or advertising purposes with regard to arts, culture, fashion, music and sports; Arranging, organizing and conducting exhibitions and events for commercial, promotional and advertising purposes in the fields of art, culture, music, fashion and sports featuring virtual reality, augmented reality and mixed reality environments; Arranging, organizing and conducting virtual reality, augmented reality and mixed reality exhibitions and events for commercial, promotional or advertising purposes with regard to arts, culture, fashion, music and sports; business marketing consulting services, namely, launching and marketing new street culture brands, in INT. CLASS 35;

 

·       Entertainment services in the nature of providing exhibitions and experiences, namely, {specify type of experience with greater detail, e.g., interactive fair experiences}, in the fields of arts, culture, fashion, music and sports; arranging and conducting special events for social entertainment purposes; Entertainment services in the nature of providing virtual reality, augmented reality, and mixed reality exhibitions in the fields of arts, culture, fashion, music and sports; arranging and conducting special events for social entertainment purposes that feature virtual reality, augmented reality and mixed reality multimedia content, in INT. CLASS 41.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Advisory – Partial Abandonment

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Classes 9, 35 and 41 will be deleted from the application:  virtual, augmented and mixed reality software for navigating a virtual museum or art exhibition; virtual reality software for education, instruction and training in arts and culture; virtual reality software for experiencing, viewing and participating in entertainment, educational, promotional, arts and culture events; arranging of exhibitions for viewing in a virtual reality environment; virtual reality game software; augmented reality game software; mixed reality game software; game software for wireless devices; game software for handheld electronic devices; video game software; interactive multimedia computer game programs; computer game software; software for integrating electronic data with real world environments for the purposes of entertainment, education, gaming, communicating, and social networking; virtual reality software for navigating a virtual reality environment; augmented reality software for navigating an augmented reality environment (CLASS 9); Arranging, organizing and conducting exhibitions and events in the field of arts, culture, fashion, music and sports; Arranging, organizing and conducting exhibitions and events for digital multimedia recording; Arranging, organizing and conducting exhibitions and events in the field of art, culture, music, fashion and sports featuring virtual reality, augmented reality and mixed reality environments; Arranging, organizing and conducting exhibitions and events for digital multimedia recording for use in virtual reality, augmented reality and mixed reality environments (CLASS 35); Entertainment services in the nature of providing exhibitions and experiences in the fields of arts, culture, fashion, music and sports; entertainment consulting services in the nature of launching and marketing new street culture brands; entertainment consulting services in the nature of introducing and marketing arts, culture, fashion, music and sports brands featuring virtual reality, augmented reality and mixed reality environments; Entertainment services in the nature of providing virtual reality, augmented reality, and mixed reality exhibitions and experiences in the fields of arts, culture, fashion, music and sports; (CLASS 410.  The application will then proceed with the following goods and/or services in International Classes 35 and 41 only: 

 

• Virtual, augmented, and mixed reality downloadable software for use to provide virtual reality experiences; electronic downloadable game software; downloadable electronic game programs – CLASS 9;

 

• Arranging, organizing and conducting exhibitions and events for commercial, promotional or advertising purposes with regard to arts, culture, fashion, music and sports; Arranging, organizing and conducting virtual reality, augmented reality and mixed reality exhibitions and events for commercial, promotional or advertising purposes with regard to arts, culture, fashion, music and sports – CLASS 35;

 

• Arranging and conducting special events for social entertainment purposes; arranging and conducting special events for social entertainment purposes that feature virtual reality, augmented reality and mixed reality multimedia content – CLASS 41.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

 

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  

 

 

/Curtis W. French/

Curtis W. French

Trademark Examining Attorney

Law Office 115

571-272-9472

curtis.french@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 November 21, 2019 for

U.S. Trademark Application Serial No. 88613228

 

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. 

 

 

/Curtis W. French/

Curtis W. French

Trademark Examining Attorney

Law Office 115

571-272-9472

curtis.french@uspto.gov

 

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 November 21, 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.”