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:  December 19, 2019

 

INTRODUCTION

 

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:

• Prior-filed Pending Applications
• Section 2(d) Refusal – Likelihood of Confusion
• Amended Identification of Services Required
• Multiple Class Application Requirement

 

PRIOR-FILED PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88263698 and 88586162 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2170132, 2367035, 2367037, 3235822, 4124625, 4551514, 4813891, 5172480, 5488000, and 5756585. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is PEACOCK for “Software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers; computer software, namely, downloadable players for audio-visual media content; video search and annotation software; computer software for streaming audio-visual media content to mobile electronic devices and computers; ad tracking and optimization software; video game software; interactive game programs; software platform for providing programmatic interfaces for third parties to access website content and data for web development and website application development; interactive games, specifically, computer and video game programs featuring video content from motion pictures, television programming, or music videos; digital media, namely, downloadable audio-visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos; pre-recorded media, namely, solid-state and semiconductor memories, hard drives and discs, magnetic memories, hard drives and discs, flash or "thumb" drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos.”

 

Registrants’ marks are:

 

DUKE PEACOCK for “series of prerecorded compact discs all containing music” in Registration No. 2170132;

 

PEACOCK GOSPEL CLASSICS for “musical sound recordings” in Registration Nos. 2367035 and 2367037 and;

 

PEACOCK MAGIC for “Gaming devices, namely gaming machines and computer software used therewith to enable the gaming machine to run” in Registration No. 3235822;

 

“PEACOCK CORRIDOR” in Chinese characters, in relevant part, “Phonograph records featuring music and movies; Digital media, namely, pre-recorded audio and video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings and DVDs featuring music, movies and documentaries; Compact discs featuring music, movies and documentaries; Video discs featuring movies, music, documentaries; video game cartridges” in Registration No.  4124625;

 

PEACOCK for “Computer software for management and visualization of data migration” and “Providing online non-downloadable software for management and visualization of data migration” in Registration No. 4551514;

 

LADY PEACOCK for “game software” in Registration No. 4813891;

 

PEACOCK ENTERTAINMENT for “Entertainment services, namely, music publishing services; record label services, namely, music songwriting, music recording and production services” in Registration No. 5172480;

 

PEACOCK PALACE for, in relevant part, “Entertainment services, namely, providing on-line computer games and game applications, enhancements within online computer games, and game applications within online computer games” in Registration No. 5488000; and

 

THE PEACOCK NEWS for “Providing a website featuring entertainment information in the field(s) of daily events” in Registration No. 5756585.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Applicant’s mark is PEACOCK and design. Registrants’ marks are DUKE PEACOCK, PEACOCK GOSPEL CLASSICS, PEACOCK MAGIC, “PEACOCK CORRIDOR” in Chinese characters and design, LADY PEACOCK, PEACOCK ENTERTAINMENT, PEACOCK PALACE, and THE PEACOCK NEWS and design.

 

In this case, all of the compared marks contain the term PEACOCK, meaning the marks are identical in part in sound, appearance, meaning, and commercial impression. While each of the cited registrations has additional material that may distinguish it from other registered marks for similar goods, Applicant’s mark contains no additional material that would distinguish it from each of the cited registrations. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). 

 

Applicant’s and registrants’ use of design elements does not obviate a likelihood of confusion because consumers will use the literal portions of each of the marks to refer to each party’s goods and services. Additionally, the designs in the registered marks THE PEACOCK NEWS and “PEACOCK CORRIDOR” are of stylized peacocks, which only serve to reinforce to commercial impression of the literal elements in the marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Regarding “PEACOCK CORRIDOR” in Chinese characters, under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The registrant’s mark is in Chinese, which is a common, modern language in the United States.  See In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986) . 

 

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the Chinese language is a common, modern language spoken by an appreciable number of consumers in the United States.  Thus, applicant’s PEACOCK is the English equivalent to the first term in registrant’s Chinese mark.

 

Thus, due to the similarity in sound, appearance, meaning, and commercial impression, the marks are confusingly similar.

 

Relatedness of the Goods and Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

Applicant’s services are “Software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers; computer software, namely, downloadable players for audio-visual media content; video search and annotation software; computer software for streaming audio-visual media content to mobile electronic devices and computers; ad tracking and optimization software; video game software; interactive game programs; software platform for providing programmatic interfaces for third parties to access website content and data for web development and website application development; interactive games, specifically, computer and video game programs featuring video content from motion pictures, television programming, or music videos; digital media, namely, downloadable audio-visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos; pre-recorded media, namely, solid-state and semiconductor memories, hard drives and discs, magnetic memories, hard drives and discs, flash or "thumb" drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos.”

 

Registrants’ goods and services are

·         “Gaming devices, namely gaming machines and computer software used therewith to enable the gaming machine to run”;

·         “game software”;

·         “Entertainment services, namely, providing on-line computer games and game applications, enhancements within online computer games, and game applications within online computer games

·         “Computer software for management and visualization of data migration” and “Providing online non-downloadable software for management and visualization of data migration”;

·         “series of prerecorded compact discs all containing music”;

·         “musical sound recordings”;

·         “Phonograph records featuring music and movies; Digital media, namely, pre-recorded audio and video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings and DVDs featuring music, movies and documentaries; Compact discs featuring music, movies and documentaries; Video discs featuring movies, music, documentaries; video game cartridges”;

·          “Entertainment services, namely, music publishing services; record label services, namely, music songwriting, music recording and production services”; and

·          “Providing a website featuring entertainment information in the field(s) of daily events”.

 

First, regarding software, the application uses broad wording to describe “software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “game software”, “Entertainment services, namely, providing on-line computer games and game applications, enhancements within online computer games, and game applications within online computer games”, “Computer software for management and visualization of data migration” and “Providing online non-downloadable software for management and visualization of data migration”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods and services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s software goods and/or services are related.

 

Further, the attached evidence from Blizzard, Lego, and Nintendo shows that online games, downloadable games, and video game cartridges or discs are commonly provided by the same entity under the same mark.

 

Second, regarding music and audiovisual media, and related services the compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The attached evidence from Gogol Bordello, Lana Del Ray, and Maren Morris shows that musical sound recordings and music videos are offered in various formats, including digital download, cassettes, “phonograph” optical discs, CD, and DVD, by the same entity and under the same mark.

 

The attached evidence from DC and Marvel shows that audiovisual media is offered in various formats, including digital download, DVD, optical discs, laser disc, and video disc, by the same entity and under the same mark. This evidence, combined with the evidence from Blizzard and Nintendo shows that the same entity provides audiovisual media and video games under the same mark.

 

The attached evidence from Sony and Universal shows that musical recordings, music publishing and record label services are offered by the same entity under the same mark.

 

Blizzard, Lana Del Rey, Maren Morris, and also provide a website featuring entertainment information in the field of daily events along with their video games, or music, or videos. The attached evidence NPR shows that a single entity provides a website featuring entertainment information in the field of daily events and provides downloadable digital audio and audiovisual content, including music and audio recordings in the field of daily events.

 

Thus, applicant’s and registrants’ goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Conclusion

 

Due to the similarity of the marks and the relatedness of the goods and services, there is a likelihood of confusion between the applied-for mark and registered marks. Accordingly, registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

 

Applicant must clarify the identification of goods because it is indefinite, as the nature of the goods is not specified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Further, some of the wording is overbroad in describes goods and services in more than one class. Specifically, software in Class 9 must specify whether it is recorded or downloadable. Applicant’s software is so broadly written as to encompass both downloadable and recorded software in Class 9, as well as the provision of online non-downloadable game software in Class 41 and the provision of all other online, non-downloadable software in Class 42.

 

The wording “digital media, namely, downloadable audio visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos” is indefinite because it does not describe the format of the content.

 

The wording “pre-recorded media, namely, solid-state and semiconductor memories, hard drives and discs, magnetic memories, hard drives and discs, flash or "thumb" drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos” repeats the terms “hard drives and discs”. Applicant may further define the repeated wording or remove it.

 

The wording “pre-recorded media, namely, solid-state and semiconductor memories, hard drives and discs, magnetic memories, hard drives and discs, flash or "thumb" drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos” is confusing because it is unclear if the audio cassettes and laser discs are included as “prerecorded media” or not.

 

The wording “thumb drive” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No. 3942519. 

 

Identifications of goods should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may substitute the following wording, if accurate (suggestions in bold):

 

CLASS 9:       Downloadable game software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers; downloadable computer software for playing audio-visual media content; downloadable video search and annotation software; downloadable computer software for streaming audio-visual media content to mobile electronic devices and computers; downloadable ad tracking and optimization software; downloadable video game software; downloadable  interactive game programs; downloadable software platform for providing programmatic interfaces for third parties to access website content and data for web development and website application development; downloadable interactive computer and video game programs featuring video content from motion pictures, television programming, or music videos;  digital media, namely, downloadable audio-visual recordings in the fields of news, entertainment, sports, comedy, drama, music, and music videos; pre-recorded digital media devices, namely, solid-state and semiconductor memories, hard drives and discs, magnetic memories, flash drives, USB drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs, all featuring music and music videos;  pre-recorded video and audio cassettes, and laser discs, all featuring news, sports, entertainment, comedy, drama, music, and music videos;

 

CLASS 41:      providing online non-downloadable video game and interactive game software;

 

CLASS 42:      providing online non-downloadable computer software for playing audio-visual media content; providing online non-downloadable computer software for playing audio-visual media content; providing online non-downloadable video search and annotation software; providing online non-downloadable computer software for streaming audio-visual media content to mobile electronic devices and computers; providing online  non-downloadable ad tracking and optimization software; Platform as a service (PaaS) services featuring software platforms for providing programmatic interfaces for third parties to access website content and data for web development and website application development.

 

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.

 

MULTIPLE-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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

RESPONSE TO OFFICE ACTION

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Jillian Michaud-King/

Examining Attorney

Law Office 122

571.272.5153

jillian.michaud-king@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.

 

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.  

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 19, 2019 for

U.S. Trademark Application Serial No. 88616917

 

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. 

 

 

/Jillian Michaud-King/

Examining Attorney

Law Office 122

571.272.5153

jillian.michaud-king@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 December 19, 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.”