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 23, 2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  The 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 records.

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).

 

1.         Consent.

Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010).

The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:

(1)       A statement that the name shown in the mark identifies TAYLOR SWIFT, a living individual whose consent is of record.  If the name represents that of a pseudonym, stage name, title and name combination, or nickname, applicant must include a statement that [specify fictitious or assumed name] identifies the [pseudonym/stage name/title and name/nickname] of [specify actual name], a living individual whose consent is of record.

(2)       A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may use, if applicable, the following:  “I, TAYLOR SWIFT, consent to the use and registration of my name as a trademark and/or service mark with the USPTO.”

See TMEP §§813, 813.01(a), 1206.04(a).

Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark.  See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).

 

2.         Identification of goods/services.

An application’s identification of goods/services must be specific, definite, clear, accurate and concise.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953); TMEP §1402.01. 

In the instant case, the identification of goods/services is unacceptable as containing indefinite and overbroad wording.  Specifically, with regard to “computer game software; computer graphics software; computer application software for cellular telephones, handheld electronic devices, and wireless devices for voice, data and image transmission and for sharing information on social media,” the ID Manual provides as follows:          

On 01-01-2019, this 01-02-1997 entry was deleted in compliance with Nice 11-2019. Under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.

Alternatively, if the applicant provides temporary use of online non-downloadable software, then this is a Class 42 service (or Class 41 for games).  Additionally, the applicant must indicate the nature of its “multi-media content” and its “and other information and multi-media materials” (or delete the latter if merely provided as a catchall).  Finally, the applicant must clarify that its “website featuring photographs, … pre-recorded musical performances” consists of non-downloadable matter to remain in Class 41.

Accordingly, the applicant must clarify along the lines indicated below.  The applicant may adopt the following identification (to the extent accurate):

Class 9—cases for mobile phones; carrying cases specially adapted for electronic equipment, namely, mobile phones and mobile computers; pre-recorded CDs featuring performances by an individual in the field of music and musical entertainment; musical sound recordings; audio recordings featuring music; musical video recordings; series of musical sound recordings; video recordings featuring music; downloadable audio files featuring music and musical entertainment; downloadable video recordings featuring music and musical entertainment; downloadable musical sound recordings; downloadable ring tones for mobile phones; digital music downloadable from the internet; video recordings featuring music and musical entertainment; audio recordings featuring music and musical entertainment; digital media, namely, downloadable audio and video recordings, and CDs featuring and promoting music and musical entertainment; downloadable multimedia files containing audio, video, artwork, graphics, hypertext, text relating to music and musical entertainment; downloadable multimedia files featuring music; downloadable electronic newsletters delivered by e-mail in the fields of music, entertainment, and musical entertainment; [specify downloadable and/or recorded]computer game software; [specify downloadable and/or recorded]computer graphics software; [specify downloadable and/or recorded]computer application software for cellular telephones, handheld electronic devices, and wireless devices for voice, data and image transmission and for sharing information on social media; downloadable graphics for cellular telephones, handheld electronic devices, and wireless devices; stands adapted for mobile phones; devices for hands-free use of mobile phones; magnetically encoded gift cards  

Class 42—providing temporary use of online non-downloadable computer graphics software; providing temporary use of online non-downloadable computer application software for cellular telephones, handheld electronic devices, and wireless devices for voice, data and image transmission and for sharing information on social media

Class 15—guitar picks; musical instruments

Class 16—stationery; blank journals; lithographs; art prints; photographs; posters; stickers and decalcomanias; decals; notebooks; printed sheet music; song books; paper gift cards; non-magnetically encoded gift cards

Class 22—lanyards for holding badges; lanyards for holding laminates; lanyards for holding cards; lanyards for holding keys; all-purpose nylon straps; all-purpose straps comprised of synthetic textile materials

Class 35—retail and on-line retail store services featuring paper goods, household linens, home furnishings, cosmetics, toiletries, key chains, collectibles, memorabilia, toys, printed publications, gift cards and printed materials; retail and on-line retail store services featuring audio recordings, video recordings, digital media; promoting the concerts of others

Class 41—entertainment services, namely, conducting contests; entertainment services, namely, providing a website featuring non-downloadable multi-media content in the nature of [specify, e.g., audio recordings, video recordings, and audio-visual recordings]in the fields of music and musical entertainment; entertainment services, namely, providing a website featuring non-downloadable multi-media content in the nature of [specify, e.g., audio recordings, video recordings, and audio-visual recordings]relating to a musical artist; entertainment services, namely, providing a website containing non-downloadable multi-media content in the nature of [specify, e.g., audio recordings, video recordings, and audio-visual recordings]featuring pre-recorded musical performances, stage performances, public appearances, and photographs, and other information and multi-media materials relating to music and musical entertainment; entertainment services, namely, providing a website containing non-downloadable multi-media content in the nature of [specify, e.g., audio recordings, video recordings, and audio-visual recordings]featuring pre-recorded musical performances, stage performances, public appearances, and photographs, and other information and multi-media materials relating to a musical artist; entertainment services, namely, providing a website featuring news and non-downloadable articles relating to music and musical entertainment; entertainment services, namely, providing a website featuring news and non-downloadable articles relating to a musical artist; entertainment services in the nature of live musical performances; entertainment services, namely, providing a website featuring non-downloadable photographs, non-downloadable videos, non-downloadable pre-recorded musical performances, and reviews in the field of music and musical entertainment; entertainment services, namely, providing a website featuring non-downloadable photographs, non-downloadable videos, non-downloadable pre-recorded musical performances, and reviews relating to a musical artist; fan club services; providing on-line music, not downloadable, namely providing non-downloadable digital music via a global communications network; entertainment services, namely, providing information relating to music and musical entertainment via a global communications network; entertainment, namely, production of musical performances, musical events, musical tours, theatrical performances, theatrical tours, comedy performances; concert booking; provision of information relating to live performances, road shows, live stage events, theatrical performances, live music concerts and audience participation in such events; providing temporary use of online non-downloadable computer game software

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

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 at http://tmidm.uspto.gov.  See TMEP §1402.04.

 

3.         Fee.

The application identifies goods and/or services that are classified in at least seven classes; however, the applicant’s current fee structure is sufficient for only six classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.  Therefore, the applicant must either restrict the application to the number of classes covered by the fees already paid, or submit the fees for each additional class. 

If the applicant prosecutes this application as a more-than-six–, rather than as a six-, class application, then the applicant must comply with both of the requirements below for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Trademark Act Section 44(e) or both:

(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

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).

For an overview of the requirements for a multiple-class application based on Section 1(b) or Section 44 or both, and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, the applicant should visit http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

4.         Request for information.

In order to allow for proper examination of this application, including the determination as to whether wording in the mark is merely descriptive (or deceptively misdescriptive) in relation to the applicant’s goods/services, the applicant must submit samples of advertisements or promotional materials for the goods/services or, if unavailable, for goods/services of the same type.  If such materials are not available, the applicant must describe the nature, purpose, and channels of trade of all goods/services identified in the application.

In addition, the applicant must respond to the following questions:

Does the wording “touring” have any meaning or significance, either in the industry in which the goods/services are manufactured/provided or as applied to the applicant’s particular goods/services (perhaps as a term of art)?

See 37 C.F.R. §2.61(b); TMEP §814.

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

5.         Signature/date.

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

 

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.    

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@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 December 23, 2019 for

U.S. Trademark Application Serial No. 88618829

 

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. 

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@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 23, 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.”