Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 27, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 5, 2020.

 

In a previous Office action dated December 19, 2019, the applicant was required to satisfy the following requirements:  Amend the identification and classification of services, and clarify the mark description.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: Mark Description requirement.  See TMEP §§713.02, 714.04. 

 

Additionally, applicant has partially satisfied the identification and classification of services requirement, but further requirements must be maintained, as set forth below.

 

Accordingly, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

All previous arguments and evidence, where applicable, are incorporated by reference herein.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification and Classification of Services
• Multiple-Class Application Requirements
• Proper Response to Partial Final Action

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES

 

The Class 35 wording “arranging, conducting, and organizing business seminars, business conferences, and business workshops in the field of intellectual property protection, innovation, anti-counterfeiting and anti-piracy programs, and legislation and policies impacting the motion picture industry” in the identification of services is overbroad because it includes services in other classes, such as Class 41 business seminars.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The Class 41 wording “providing educational information via a website in the fields of motion picture piracy, illegal duplication of copyrighted materials, the need for protection of copyrighted content, and the technological measures on certain media products” in the identification of services is indefinite and must be clarified because it is unspecified whether the information provided is in the field of intellectual property information.  Furthermore, this wording appears to be misclassified, as educational information services are classified according to their subject matter, and this identification of services entry appears to feature subject matter in the category of Class 45 intellectual property information services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 35: Association services, namely, promoting the interests of member motion picture distributors, and of the motion picture industry generally; public advocacy to promote awareness, namely, promoting public awareness of the importance of intellectual property protection, innovation, anti-counterfeiting and anti-piracy programs, by means of public advocacy; arranging, conducting, and organizing business conferences, and business workshops in the field of intellectual property protection, innovation, anti-counterfeiting and anti-piracy programs, and legislation and policies impacting the motion picture industry;

 

Class 41: Providing information on motion picture ratings; Providing an online searchable database of entertainment information; providing entertainment information related to sources for legally streaming and downloading motion pictures and television programs; providing news and information about the motion picture industry through a website; arranging, conducting, and organizing business seminars, educational conferences, and educational workshops in the field of intellectual property protection, innovation, anti-counterfeiting and anti-piracy programs, and legislation and policies impacting the motion picture industry; providing non-downloadable electronic publications in the nature of articles, newsletters, reports, and educational reports and fact-sheets related to the motion picture industry, intellectual property protection, innovation, anti-counterfeiting programs, anti-piracy programs, and legislation and policies impacting the motion picture industry;

 

Class 45: providing educational intellectual property information via a website in the fields of motion picture piracy, illegal duplication of copyrighted materials, the need for protection of copyrighted content, and the technological measures on certain media products.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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 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 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 3 classes; however, applicant submitted a fees sufficient for only 2 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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

PROPER RESPONSE TO PARTIAL FINAL ACTION

 

The stated refusal refers to the following services and does not bar registration for the other services:

 

Class 35: arranging, conducting, and organizing business seminars, business conferences, and business workshops in the field of intellectual property protection, innovation, anti-counterfeiting and anti-piracy programs, and legislation and policies impacting the motion picture industry;

 

Class 41: providing educational information via a website in the fields of motion picture piracy, illegal duplication of copyrighted materials, the need for protection of copyrighted content, and the technological measures on certain media products.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the services to which the refusal pertains;

 

(2)  Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for the services identified in the refusal, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

ASSISTANCE

 

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 requirements 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. 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/John S. Miranda/

Trademark Examining Attorney, Law Office 120

United States Patent & Trademark Office

571-272-4553

John.Miranda@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 January 27, 2020 for

U.S. Trademark Application Serial No. 88619711

 

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. 

 

 

/John S. Miranda/

Trademark Examining Attorney, Law Office 120

United States Patent & Trademark Office

571-272-4553

John.Miranda@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 January 27, 2020, 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.”