| To: | Oath Inc. (tmadmin@kilpatricktownsend.com) |
| Subject: | U.S. Trademark Application Serial No. 88626168 - YAHOO! - 1157574 |
| Sent: | December 05, 2019 12:49:15 PM |
| Sent As: | ecom120@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88626168
Mark: YAHOO!
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Correspondence Address: |
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Applicant: Oath Inc.
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Reference/Docket No. 1157574
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: December 05, 2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASSES 41 & 42
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2,040,691, 2,076,457, and 4,496,049. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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.
SIMILARITIES BETWEEN 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 applied-for marks is the stylized wording “YAHOO!” for, in relevant part, “Education; providing of training; entertainment; sporting and cultural activities; entertainment services in the nature of providing non-downloadable online games and contests provided via computer networks; providing information relating to electronic and computer games; booking of entertainment; lottery services; providing non-downloadable multimedia entertainment content, namely, games and ongoing shows featuring music and sports via computer networks; ongoing entertainment programs broadcast via radio, television, cellular communication, wireless communication, the internet, electronic communications networks, and computer networks in the fields of current events, news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; production of music video programs for broadcast on computer networks; production of video programs for broadcast on computer networks; entertainment services, namely, providing information, statistics and commentary in the fields of education, entertainment, finance, current event news, sports betting, and sports for children and adults via computer networks; providing entertainment and television listings via the internet; organizing and conducting fantasy sports contests and leagues; providing online fantasy sports news information; providing sports information via telephone, cellular telephone, wireless communication devices, and the internet; providing information in the field of sports, sports scores, sports statistics, player statistics, play-by-play sports commentary, and sports editorial commentary via the internet; provision of musical performances, musical videos, videos, film clips, celebrity interviews, talk shows, television show previews, photographs, and other entertainment related multimedia materials, provided via a website; online photography services; providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all via computer networks; providing information regarding photography; entertainment services, namely, providing podcasts in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; entertainment services, namely, providing videos in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; entertainment services in the nature of a video series about finance; providing entertainment information in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness provided via a website; providing an online publication in the nature of a newsletter in the field of finance that is transmitted via a subscription service for use in providing analytics, alerts, and forecasts of financial and economic data via market research and statistical analysis tools; online publication of electronic books and journals; electronic desktop publishing; online browsing services for electronic publication; providing online electronic publications, not downloadable; online browsing services for electronic images; searching for books, magazines and periodicals; translation of books, magazines and periodicals; educational services; entertainment services; entertainment information; leisure and entertainment information; information on recreational activities; providing TV program information; providing online video streaming services; providing online videos, not downloadable; providing films, not downloadable, via video-on-demand services; providing TV programs, not downloadable, via video-on-demand services; providing online music streaming services; providing online music, not downloadable; game services provided online from a computer network; organization of competitions; arranging and conducting of conferences; organization of exhibitions for cultural or educational purposes; production of film, video and disc; planning and production of recreational TV program; entertainer services; news reporters services; edit, publication, search, subscription and translation services for books, magazines and periodicals” in International Class 41 and “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer services, namely, creating indexes of information, sites, and other resources available on computer networks for others; providing internet search engines for searching and retrieving information, websites, and other resources available on computer networks for others; providing search engines; search engine design services; providing customized online web pages featuring user-defined information, which includes search engines and online web links to other websites; online computer mapping services; mapping services, namely, providing a website and website links to geographic information, map images, and trip routing; computer services, namely, non-downloadable computer software provided online for spam filtering, firewall protection, and parental control; website featuring technology that allows users to locate other game players and play games over communication networks; platform as a service(PAAS) featuring computer software platforms for use in group communication, namely, instant messaging, file sharing, searching and posting of texts and images; computer services, namely, creating an on-line virtual environment for sports betting; providing search engines for obtaining data featuring information in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness via the internet; providing information in the form of computerized data, files, applications and information via a customized online web page; computer animation design; computer drawing; computer programming; computer software design; updating of computer software; maintenance of computer software; rental of computer software; consultancy on computer software design; computer software consultancy; computer system analysis; computer system design; installation of computer software; duplication of computer programs; computer virus protection services; design of electronic map software; providing temporary use of nondownloadable online computer software; processing of computer data; conversion of data or documents from physical to electronic media; conversion of computer programs and data, other than physical conversion; rental of network server space; rental of web servers; planning and construction of websites; creating and maintaining websites for others; providing internet search engines; web page design; web hosting; creating or maintaining web pages for others; computer technology consultancy; monitoring of computer systems by remote access; monitoring of computer systems to detect breakdowns; monitoring of computer systems for detecting unauthorized access or data breach; online data storage; electronic data storage; computer data backup; off-site data backup; information technology (IT) consultancy; providing information on computer technology and programming via a web site; cloud computing; web site design consultancy; software as a service; outsourcing service providers in the field of information technology; creating and designing website-based indexes of information for others; platform as a service; provision of research services; product development; providing clothing design information; dress designing; providing information on fashion commodity design; authenticating works of art; meteorological information; development and design of mobile applications; technical assistance regarding the operating and managing of websites for others” in International Class 42
Registrant’s marks are stylized word-design marks featuring the wording “YAHOO!”, “YAHOO!”, and “YAHOO! ON THE ROAD” for, respectively, “computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, weather, sports, current events, and reference materials” in International Class 42; “magazines regarding computer networks and searching and retrieving information, sites, and other resources on computer networks” in International Class 16; “Promoting the concerts of others” in International Class 35; and “Arranging and conducting of concerts; concert booking; entertainment, namely, live music concerts” in International Class 41.
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Based on the foregoing, applicant’s applied-for and registrant’s marks convey similar commercial impressions and are sufficiently similar to find a likelihood of confusion.
RELATEDNESS OF THE GOODS AND SERVICES
In this case, the application uses the broad Class 41 wording “entertainment”, which is presumed to encompass all services of the type described, including those in registrant’s more narrow wording, “Arranging and conducting of concerts; concert booking; entertainment, namely, live music concerts”; applicant uses the broad Class 41 wording “providing online electronic publications, not downloadable”, which is presumed to encompass all goods and services of the type described, including registrant’s more narrow Class 16 goods “magazines regarding computer networks and searching and retrieving information, sites, and other resources on computer networks”; and application and registrant use the overlapping Class 42 wordings “computer services, namely, creating indexes of information, sites, and other resources available on computer networks” and “computer services, namely, creating indexes of information, sites, and other resources available on computer networks for others”. 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 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 goods and services are related.
Based on the analysis above, applicant’s and registrant’s goods and services are related.
Because applicant’s and registrant’s marks are similar and the goods and services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
IDENTIFICATION OF GOODS & SERVICES
The Class 9 identification of goods is indefinite and must be clarified because many of applicant’s Class 9 entries fail to specify the nature of the goods within Class 9; for example, the wording “computer software used to search, retrieve, index, and organize data”, along with all other “computer software” entries, fails to specify whether the goods are in the nature of downloadable or recorded computer software goods, while the wording “compact discs, DVDs and other digital recording media” fails to specify the subject matter featured on the goods, as well as the type of “digital recording media”, such as whether the goods are CDs or DVDs. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Additionally, the Class 9 wording “provider and developer services for the mobile application including finance, online to offline and ad services in the future” in the identification of goods is overbroad and could include goods and services in other classes, such as Class 36 financial services and Class 35 advertisement services.
The Class 35 identification of services is indefinite and must be clarified because many of applicant’s Class 35 entries fail to specify the nature of the services within Class 35; for example, the wording “online retail services connected with the sale of downloadable digital music” fails to specify whether the services are in the nature of retail store services featuring downloadable digital music, while the wording “providing market information on goods” fails to specify whether the services are in the nature of providing stock market information, business marketing information, or market research information. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The Class 36 identification of services is indefinite and must be clarified because many of applicant’s Class 36 entries fail to specify the nature of the services within Class 36; for example, the wording “insurance” fails to specify whether the services are insurance brokerage, administration, or subrogation services, while the wording “financial affairs” fails to specify whether the services are financial planning, analysis, or advice services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The Class 38 identification of services is indefinite and must be clarified because many of applicant’s Class 38 entries fail to specify the nature of the services within Class 38; for example, the wording “telecommunications” fails to specify whether the services are in the nature of telecommunication access services or some other service related to telecommunications, while the wording “electronic mail services” fails to specify whether the services are in the nature of transmission of electronic mail or some other activity related to electronic mail. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The Class 41 identification of services is indefinite and must be clarified because many of applicant’s Class 41 entries fail to specify the nature of the services within Class 41; for example, the wording “education” fails to specify the nature of the services, such as whether they are classes or conferences, and if so, featuring which type of subject matter, while the wording “entertainment” fails to specify the nature of the entertainment services, such as whether they are live performances by a musical group or video production services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Furthermore, the services “providing online video streaming services” and “providing online music streaming services” are classified incorrectly. Applicant must amend the application to classify the services in International Class 38. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The Class 42 identification of services is indefinite and must be clarified because many of applicant’s Class 42 entries fail to specify the nature of the services within Class 42; for example, the wording “providing temporary use of nondownloadable online computer software” fails to specify whether the function of the software, while the wording “software as a service” fails to specify the function of the software, as well as whether the “software as a service” services featuring software for a particular function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Furthermore, the services “processing of computer data” are classified incorrectly. Applicant must amend the application to classify the services in International Class 35. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The Class 45 identification of services is indefinite and must be clarified because many of applicant’s Class 45 entries fail to specify the nature of the services within Class 45; for example, the wording “social networking services” fails to specify whether the services are in the nature of online social networking services, while the wording “security services for the physical protection of tangible property and individuals” fails to specify whether the services are security guard services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Furthermore, the services “political lobbying services” and “lobbying services, other than for commercial purposes” are classified incorrectly. Applicant must amend the application to classify the services in International Class 35. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking in the nature of supervision, life-saving and teaching apparatus and instruments, all being in the nature of cameras, life-saving rafts, video projectors, and scales; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, all being in the nature of electric conductors; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank recording computer discs; compact discs, DVDs and other digital recording media in the nature of blank pre-recorded laser disks, featuring content in the nature of music videos; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; downloadable computer software to enable users to control fire extinguishing apparatus; fire extinguishing apparatus; downloadable computer software to enable users to locate other game players and play games over communications networks; downloadable computer software for transmitting electronic mail; computer software for electronic messaging; downloadable computer software for electronic transmission of data, images, and documents via a global computer network; downloadable computer software for providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; downloadable computer software used to search, retrieve, index, and organize data; downloadable computer software used to enhance the performance and functionality of computer networks; downloadable computer software for searching and retrieving information, websites, and other resources on computer networks; downloadable computer software for providing a directory of information, websites, and resources available on computer networks; downloadable computer software for providing multiple-user access to a computer network for the dissemination of a wide range and variety of information; downloadable computer software that allows users to customize their viewing, listening, and playing experience by selecting and arranging the display and performance of audio, video, and audiovisual elements by users in the fields of music, video, sports and the entertainment industry; downloadable podcasts in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; downloadable mobile applications to broadcast live sporting events, broadcasting of sports programming and sports information, including sports scores, sports statistics, player statistics, play-by-play sports commentary and sports editorial commentary; downloadable mobile applications for use in fantasy sports leagues, managing and participating in fantasy sports leagues, providing sports programming and information, providing previews, alerts, replays, video clips of sporting competitions and webcam feeds in the field of sports; downloadable mobile applications for providing entertainment and sports related news; downloadable mobile applications for sports betting; downloadable films and television programs featuring news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness provided via a video-on-demand service; downloadable mobile applications for viewing online programs, text, images, multimedia content and videos in the fields of current events, news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; downloadable mobile application featuring software for texting, sharing images videos, multimedia content; downloadable mobile application featuring software for use in group communication, namely, instant messaging, social media, file sharing, and searching and posting of text and images; downloadable mobile applications for news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; downloadable mobile applications for electronic chat rooms and bulletin boards; downloadable mobile applications for electronic mail, electronic messaging, and electronic transmission of data, images, and documents; credit cards; downloadable mobile applications featuring software used to link credit cards and user bank accounts; point of sale systems being terminals; reservation systems software, namely, downloadable software for allowing restaurant customers to book reservations; downloadable computer software used to link credit cards and bank accounts; electronic books featuring music journalism, recorded on computer media; music downloaded from the internet being downloadable music files, voice data downloaded from the internet in the nature of audio recordings featuring voice recordings; downloadable music files; films downloaded from the internet in the nature of comedy and drama films provided via a video-on-demand services, images downloaded from the internet in the nature of downloadable image files featuring pictures of athletes; downloadable image files featuring pictures of animals; movies downloaded from the internet, namely, downloadable movies featuring drama and comedy provided via a video-on-demand service; books downloaded from the internet, namely, electronic downloadable books in the field of sports journalism; electronic publications, downloadable, namely, electronic books in the field of sports journalism; electronic sheet music, downloadable; pictures downloaded from the internet, namely, downloadable image files featuring pictures of animals; downloadable graphics for mobile phones; electronic manual in the nature of an electronic publication featuring video game instructions, recorded on computer media; game programs downloaded from the internet being downloadable computer game programs, video recording media being blank CD-ROMS; sound recording carriers being recording and playing devices for sound; downloadable mobile applications for viewing online programs, text, images, multimedia content and videos;
Class 35: Advertising; business management; business administration; providing office functions; advertising and promotional services for others, namely, placing advertisements and promotional displays for others in electronic sites accessed via computer networks; dissemination of advertising matter, namely, providing advertising and graphic, multimedia and interactive images through computer networks for use on personal home pages; promoting the goods and services of others by means of operating an online shopping mall with links to the retail web sites of others; providing information via the internet regarding the goods and services of others in the nature of a buyers' guide, namely, providing an online buyers guide service providing information in the field of home computers; provision of online price comparison services; compilation of online business directories, namely, providing online business directories featuring restaurants and bars; providing an online commercial and residential information directory on the internet, namely, a business directory featuring restaurants and bars; providing online directory information services also featuring hyperlinks to other websites, namely business directories featuring online retail businesses; business consulting and technical business assistance regarding the operating, managing, advertising, and marketing of websites for others; business consulting services; business marketing consultation in the field of online commerce websites; general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals; providing information regarding coupons provided by others, namely, price comparison services; providing consumer product information via the internet; business assistance services, namely, electronic calendaring and reminder services for business purposes rendered via computer networks for organizing and recording appointments and events in the nature of providing such services via a website with features to organize appointments, reminders, and dates; administration of loyalty programs involving discounts or incentives namely, incentive awards programs to promote the sale of product and services of others; administration of sales promotion incentive programs namely, incentive awards programs to promote the sale of product and services of others; administration of incentive programs using mobile application, namely, administration of a customer loyalty program which provides free or discount meals to frequent diners at a restaurant; production of video recordings for advertising purposes; providing market research information on goods; word processing; systemization of information into computer databases; auctioneering; rental of advertising space; rental of online advertising banners; provision of an online marketplace for buyers and sellers of goods and services; providing a searchable online advertising guide featuring the goods and services of online vendors, advertising the goods and services of online vendors via a searchable online guide, providing online marketplaces for sellers of goods and or services, presentation of goods on communication media in the nature of providing television home shopping services in the field of general consumer merchandise for retail purposes, arranging commercial trading and contract transactions, for others, via online shops; online retail store services featuring the sale of downloadable digital music; arranging subscriptions to telecommunication services for others; intermediary services for purchase and sale of goods, namely, providing online retail store services featuring downloadable digital music; providing intermediary services for goods exchange via the internet, namely, providing online retail store services featuring downloadable digital music; business administration of consumer loyalty programs; business administration of consumer loyalty service programs for commercial, promotional and/or advertising purposes; providing incentive awards programs for customers, namely, incentive awards programs to promote the sale of product and services of others; processing of computerised data; lobbying services, other than for commercial purposes, namely, promoting the interests of search engine providers in the field of politics; political lobbying services, namely, promoting the interests of search engine providers in the field of politics; processing of computer data;
Class 36: Insurance brokerage; financial affairs, namely, financial analysis services; monetary affairs, namely, financial information and analysis services; real estate affairs, namely, real estate appraisal; personal financial and investment advisory services; providing information and advice in the field of personal finance, personal financial investments, and the financial aspects of retirement; arranging financial transactions, namely, financial consulting services; automated banking services relating to credit card transactions; automated bill payment services; clearing services for payment transactions, namely, financial clearing houses; conducting cashless payment transactions, namely, processing electronic payments made through prepaid cards; conducting of financial transactions, namely, mortgage lending; credit card and debit card services, namely, payment processing services; electronic commerce bill payment services; electronic credit card processing transactions; electronic funds transfer services; electronic processing of payments via a global computer network, namely, processing electronic payments made through prepaid cards; financial consultancy relating to the execution of cashless payment transactions; financial transactions, namely, mortgage lending services; financial information services relating to the automated payment of accounts; financial information services relating to the automated transfer of funds; mobile bill payment service; processing of credit card payments at pods and vendor kiosks; loan origination services; loan financing; financial loan services, namely, loan financing; installment loan services, namely, loan financing; provision of loans, namely, financing and loan services; financial services, namely, financing and loan services; financial investment brokerage services; financial services relating to insurance, namely, financial evaluation for insurance purpose; financial evaluation, namely, financial evaluation for insurance purpose; financial trust planning; financial trust administration; financial trust operations; foreign currency services, namely, foreign exchange transactions; foreign currency exchange, namely, foreign exchange transactions; provision of finance for sales, namely, mortgage lending; provision of finance for credit sales, namely, credit card payment processing services; provision of finance for credit sales in the nature of credit card payment processing services; internet banking; electronic banking; international banking; banking services; providing banking information; issuing credit cards; credit card payment processing services; issuance of credit cards; financial guarantees; loan guarantees in the nature of security services, namely, guaranteeing loans; trust investment management services; management of investments; investment management of funds; financial management of collective investment schemes; management of investments for mutual clubs and societies; monetary transactions, namely, electronic cash transactions; payment administration services, namely, bill payment services; tax payment processing services; bill payment services provided via call centers; bill payment services provided via wireless telecommunications apparatus and devices; payment transaction card services, namely, debit card payment processing services; processing credit card transactions for others; processing debit card transactions for others; processing electronic payments made through prepaid cards; processing of electronic credit card transactions; processing of electronic payments, namely, credit card payment processing services; processing of payment transactions via the internet, namely, credit card payment processing services; processing payments for the purchase of goods and services via an electronic communications network, namely, credit card payment processing services; processing payments made by charge cards, namely, credit card payment processing services; provision of financial information relating to credit card transactions; transmission of bills and payments, namely, bill payment services; electronic funds transfers; processing of electronic funds transfer, ach, credit card, debit card, electronic check and electronic payments, all being in the nature of credit card and debit card payment processing; clearing and reconciling financial transactions via a global computer network; financial transaction services, namely, secure commercial transactions and payment options using a mobile device at a point of sale; cash card payment transaction processing services; payment and funds verification services; credit card verification services; providing, processing, verifying and authenticating mobile payments, namely, electronic payment services involving electronic processing and subsequent transmission of bill payment data; processing and administering mobile payments, namely, electronic payment services involving electronic processing and subsequent transmission of bill payment data; electronic transfer of money being virtual currency; information, advisory and consultancy services relating to the aforesaid;
Class 38: Telecommunications access services; broadcasting of audio, video, and multimedia content in the nature of radio and television by means of radio, cellular communication, wireless communication, the internet, computers, mobile devices, electronic communications networks, and computer networks; electronic mail transmission services; providing multiple user access to global computer networks; providing multiple-user access to global computer networks for the transfer and dissemination of a wide range of information; electronic transmission of data, messages, images, and documents via computer networks, mobile devices, and the internet; internet telephony services; providing telephone communication services via computer terminals and networks; providing access to data or documents stored electronically in central files for remote consultation; electronic messaging services; providing online chat rooms and electronic bulletin/message boards for transmission of messages among users in the field of general interest and for playing games; voicemail services; telephone voice messaging services; providing online communications links which transfer the website user to other local and global web pages; telecommunication services, namely, instant messaging, and electronic data transmission of text, audio, video and other multimedia; telephone directory information in the nature of information about telecommunication; news agencies being services for electronic transmission; television broadcasting; radio broadcasting; transmission of telephone communications; transmission of cell phone communications; voice mail services in the nature of box service; telecommunication transmission of value-added network, namely, transmission of information on optical telecommunication networks; telephone secretary services in the nature of provide telephone communications services; telecommunication connections to the internet; telecommunication connections to global computer information networks; online information transmission; communications by computer terminals; transmission of electronic mail; rental of telecommunications lines in the nature of an electronic mailbox; provide information transmission on electronic bulletin board; electronic bulletin board services; telecommunication line connection, namely, providing telecommunications connections to the internet; computer-aided transmission of messages and images; providing telecommunications connections to a global computer network; providing user access to global computer networks; telecommunications routing and junction services; chat room information transmission, namely, providing internet chat rooms; providing telecommunication channels for teleshopping services; providing internet chatrooms; providing access to databases; providing telecommunications access services to online network data; streaming of data; transmission of telegram communications; transmission of fiber optic network communications; satellite transmission; teleconferencing services; video conference services; satellite locating signal transmission service; telecommunication transmission; providing telecommunication information; communication information service, namely, providing information about telecommunication; information about telecommunication; rental of telecommunication equipment; transmission of greeting cards online; transmission of digital files; providing online forums for transmission of messages among computer users; online television broadcasting; online radio broadcasting; video-on-demand transmission; providing online directory information services featuring hyperlinks to other websites, all in the nature of telecommunications information; providing online video streaming services; providing online music streaming services, namely, streaming of audio material on the internet; providing online audio streaming services featuring music; providing online video streaming services;
Class 41: Education services, namely, classes in the field of music; providing of animal training; entertainment, namely, providing live music concerts; sporting and cultural activities, namely, organizing community sporting and cultural events; entertainment services in the nature of providing non-downloadable online games and contests provided via computer networks, all in the nature of providing online computer games; providing information relating to electronic computer games and computer games, provided via the internet; booking of entertainment, namely, event booking agencies; lottery services; providing non-downloadable multimedia entertainment content, namely, providing online computer games and production of ongoing television shows featuring music and sports via computer networks; ongoing entertainment radio and television programs, broadcast via radio, television, cellular communication, wireless communication, the internet, electronic communications networks, and computer networks in the fields of current events, news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; production of music video programs for broadcast on computer networks; production of video programs for broadcast on computer networks; entertainment services, namely, providing entertainment and education information in the nature of statistics and commentary, all being in the fields of education, entertainment, finance, current event news, sports betting, and sports for children and adults via computer networks; providing entertainment information in the nature of television listings via the internet; organizing and conducting fantasy sports contests in the nature of providing fantasy sports leagues for entertainment purposes; providing online fantasy sports news information; providing sports information via telephone, cellular telephone, wireless communication devices, and the internet; providing information in the field of sports, sports scores, sports statistics, player statistics, play-by-play sports commentary, and sports editorial commentary via the internet; provision of live musical performances, musical videos production, production of videos, production of film clips, providing online non-downloadable videos featuring celebrity interviews, providing online non-downloadable videos featuring talk shows, providing online non-downloadable videos featuring television show previews, non-downloadable photographs, and other entertainment related multimedia materials in the nature of podcasts in the field of music and nondownloadable online videos in the field of music, provided via a website; online photography services; providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all via computer networks; providing information regarding photography; entertainment services, namely, providing podcasts in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; entertainment services, namely, providing a website featuring non-downloadable videos in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness; entertainment services in the nature of a video series about finance, all in the nature of providing online, non-downloadable videos; providing entertainment information in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness provided via a website; providing an online publication in the nature of a newsletter in the field of finance that is transmitted via a subscription service for use in providing analytics, alerts, and forecasts of financial and economic data via market research and statistical analysis tools; online publication of electronic books and journals; electronic desktop publishing; online browsing services for electronic publication, all in the nature of publishing of electronic publications; providing online electronic publications, not downloadable, all in the nature of publishing of electronic publications; online browsing services for electronic images, namely, providing a website featuring non-downloadable photographs; publishing of electronic publications in the nature of providing searchable books, magazines and periodicals; translation of books, magazines and periodicals; educational services, namely, classes in the field of finance; entertainment services in the nature of live music concerts; entertainment information; leisure activity and entertainment information; information on recreational activities; providing TV program entertainment information; providing online videos, not downloadable, on the topic of finance; providing films, not downloadable, via video-on-demand services; providing TV programs, not downloadable, via video-on-demand transmission services; providing online music, not downloadable; game services provided online from a computer network; organization of sports competitions; arranging and conducting of educational conferences; organization of exhibitions for cultural or educational purposes; production of film, video and production of video discs; television production services in the nature of planning and production of recreational TV program; entertainer services in the nature of booking entertainment halls; news reporters services; editing, publication, search services in the nature of library services, subscription services in the nature of publishing subscription periodicals, and translation services for books, magazines and periodicals;
Class 42: Scientific and technological services and research and design relating thereto, all being in the nature of scientific research and analysis in the field of biochemistry; industrial analysis and research services, all being in the nature of analysis of industrial fluids; design and development of computer hardware and software; computer services, namely, creating indexes of information, sites, and other resources available on computer networks for others, all being in the nature of creating website indexes of information for other using information technology; providing internet search engines for searching and retrieving information, websites, and other resources available on computer networks for others; providing internet search engines; computer software design services, namely, search engine design services; providing customized online web pages featuring user-defined information, which includes search engines and online web links to other websites; online computer mapping services; mapping services, namely, providing a website and website links to geographic information, map images, and trip routing; computer services, namely, non-downloadable computer software provided online for spam filtering, firewall protection, and parental control; website featuring technology that allows users to locate other game players and play games over communication networks; platform as a service (PAAS) featuring computer software platforms for use in group communication, namely, instant messaging, file sharing, searching and posting of texts and images; computer services, namely, creating an on-line virtual environment for sports betting; providing search engines for obtaining data featuring information in the fields of news, commentary, weather, sports, entertainment, fashion, finance, music, inspiration, health, lifestyle, travel, parenting, science, technology, culture, and wellness via the internet; providing information on weather in the form of computerized data, files, applications and information via a customized online web page; computer animation design for others; computer engineering drawing services; computer programming; computer software design; updating of computer software; maintenance of computer software; rental of computer software; consultancy on computer software design; computer software consultancy; computer system analysis; computer system design; installation of computer software; duplication of computer programs; computer virus protection services; design of electronic map computer software; providing temporary use of nondownloadable online computer software for providing a search engine;; conversion of data or documents from physical to electronic media; conversion of computer programs and data, other than physical conversion; rental of network server memory space; rental of web servers; planning and construction of websites, namely, web site design; creating and maintaining websites for others; providing internet search engines; web page design; web site hosting; creating or maintaining web pages for others; computer technology consultancy; monitoring of computer systems by remote access in order to ensure proper functioning; monitoring of computer systems to detect breakdowns; monitoring of computer systems for detecting unauthorized access or data breach; online electronic data storage; electronic data storage; computer off-site data backup; off-site data backup; information technology (IT) consultancy; providing information on computer technology and programming via a web site; cloud computing featuring software for use in database management; web site design consultancy; software as a service (SAAS) featuring software for providing a search engine; outsourcing service providers in the field of information technology; creating and designing website-based indexes of information for others using information technology; platform as a service (PAAS) featuring computer software platforms for purposes of conducting pharmaceutical research; provision of pharmaceutical research services; product development; providing clothing design information; dress designing; providing information on fashion commodity design; authenticating works of art; meteorological information; development and design of mobile applications software; technical assistance regarding the operating and managing of websites for others, namely, managing the websites of others;
Class 45: Legal services; security guard services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals, namely, adoption agencies, babysitting, chaperoning, clothing rental, companionship services for the elderly and disabled, consulting in the field of personal relationships, crime prevention consultancy services in the nature of criminal investigation services, dating services provided through social networking, detective agencies, detective investigations, foster care, funeral services in the nature of undertaking, genealogical research services, guardianship services, hire of clothing in the nature of clothing rental, hire of jewellery in the nature of jewelry rental, identity verification services in the nature of verification of personal identity as part of personal background investigation, interment services, internet based dating, matchmaking and personal social introduction agency services, internet-based social networking services, social introduction agency and online social networking services, lost property return services, mentoring, personal background investigations, personal fashion consulting services, personal gift selection for others, personal social introduction agency services, personal shopper services for others, pet sitting, preparation of personality profiles in the nature of personality testing for social purposes, private investigation, providing access to online computer databases in the fields of social networking, social introduction agencies and dating services, charitable services in the nature of providing clothing to needy persons, providing fashion information, providing information in the field of personal relationships, provision of emotional support to families in the nature of providing emotional support services to crime victims, rental of footwear, rental of uniforms; Social networking services being online; guidance in the nature of counselling in the field of improving social skills in the nature of anti-online bullying guidance, marriage guidance counselling, bereavement counselling, counselling relating to spiritual direction; personal styling consultation for wardrobe purposes; providing online socializing services being social network services and dating services via correspondence; providing dating and matchmaking services via the internet; providing dating information via the internet; computer dating; Astrology forecasts; fortune telling; dating services; online social networking services; providing information on fashion; personal wardrobe styling consultation; providing online socializing and dating services via correspondence, all in the nature of online dating and social networking services; providing dating and matchmaking services via the internet; providing dating information via the internet.
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: CLAIMING OWNERSHIP OF CITED REGISTRATIONS
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 2,040,691, 2,076,457, and 4,496,049.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statements” section, find “Active Prior Registrations” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action.
/John S. Miranda/
Trademark Examining Attorney, Law Office 120
United States Patent & Trademark Office
571-272-4553
John.Miranda@USPTO.GOV
RESPONSE GUIDANCE
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.
