To: | InVideo, LLC (mark@terryfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88621588 - INVIDEO - N/A |
Sent: | January 03, 2020 12:01:10 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88621588
Mark: INVIDEO
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Correspondence Address:
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Applicant: InVideo, LLC
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Reference/Docket No. N/A
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: January 03, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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).
However, applicant must respond to the following requirements.
DISCLAIMER REQUIREMENT
In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of the features of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from The American Heritage Dictionary shows this wording IN in the mark means “By means of”. In addition, the wording VIDEO in the applied-for mark appears in applicant’s identification of services. Finally, the specimens of record show that applicant’s telecommunication software goods utilize video, that applicant provides advertising by means of video, and that applicant provides telecommunications services, namely, calls by means of video. Thus, the wording IN VIDEO merely describes the characteristics and/or featuring of applicant’s goods and services, namely, that applicant provides telecommunications services, advertising services, and telecommunications software that are video-based.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “IN VIDEO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF SERVICES REQUIREMENT
Applicant may substitute the following wording, if accurate:
International Class 009: “Providing downloadable software for telecommunications over the Internet: Providing downloadable software for advanced calling features”
International Class 035: “Advertising and advertisement services; advertising and marketing services, namely, promoting the goods and services of others; advertising and promotional services; advertising services, namely, transmitting advertising and promotional videos to consumers; advertising services, namely, promoting and marketing the goods and services of others by disseminating videos to mobile phones; advertising, marketing, and promoting the goods and services of others by disseminating videos to mobile phones; marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices; promoting the goods and services of others by means of distributing advertising on mobile phones”
International Class 038: “Telecommunication services, namely, providing advanced calling features; Telecommunication services in the nature of providing telephone services with various telephone features, namely, a dedicated toll-free number, voicemail, multiple mailbox extensions, telephone message notification, fax capabilities, detailed call reports, call waiting, call identification, call forwarding, and message waiting”
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.
COLOR CLAIM AND MARK DESCRIPTION REQUIREMENT
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: The colors red, black, and white are claimed as a feature of the mark.
Description: The mark consists of a red square with rounded edges, inside of which is a small white circular lens within a circular red lens with a white outline surrounded by a black outline, and the wording “INVIDEO” in black and red stylized font under the red square, and red brackets surrounding the wording “INVIDEO”.
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 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.
/Obieze Mmeje/
Examining Attorney
Law Office 122
(571) 272-7694
Obieze.Mmeje@uspto.gov
RESPONSE GUIDANCE