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 30, 2019

 

If the applicant does not add a class to the application, the applicant is encouraged to call or email the assigned attorney below to resolve the issues in this Office action.  If the applicant does add a class, the applicant is encouraged to respond via the USPTO website. 

 

 

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).

 

IDENTIFICATION

The wording “providing, and distributing of computer software and/or mobile applications” in the identification of services for International Class 42 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording may refer to “downloadable” software or applications in Class 9.  To be in Class 42, it must be clear that the software and applications are “non-downloadable.” 

 

The use of a colon is unacceptable.  Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant has included the term “and/or” in the identification of services in Class 42.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services; (2) the nature of the goods or services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear if the applicant intends to use the mark on “computer software or mobile applications.”

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” with “and” in the identification of goods and services, if appropriate, or rewrite the identification with the “and/or”” deleted and the goods or services specified using definite and unambiguous language. 

The particular sport for fantasy leagues must be specified.  The phrasing “aggregating online sports books” is unclear.  The applicant must specify the common commercial name for the services.

Applicant may substitute the following wording, if accurate: 

“Providing downloadable computer software and mobile applications used to access personalized recommendations in the field of sports in regard to viewing live sports broadcasts, following particular sports, teams, and players in (specify, e.g., soccer, football, basketball, baseball), aggregating information in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), following individual fantasy players in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), providing information in the field of sports betting and how to place sports bets, and aggregating online gaming information in the field of betting services in relation to sports” in Class 9; and

“Entertainment services, namely, providing personalized recommendations in the field of sports in regard to viewing live sports broadcasts, following particular sports, teams, and players in (specify, e.g., soccer, football, basketball, baseball), aggregating information in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), following individual fantasy players in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), providing information in the field of sports betting and how to place sports bets, and aggregating online gaming information in the field of betting services in relation to sports” in Class 41; and

“Design and development of computer software and mobile applications used to access personalized recommendations in the field of sports in regard to viewing live sports broadcasts, following particular sports, teams, and players in (specify, e.g., soccer, football, basketball, baseball), aggregating information in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), following individual fantasy players in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), providing information in the field of sports betting and how to place sports bets, and aggregating online gaming information in the field of betting services in relation to sports” in Class 42; and

“Providing online non-downloadable computer software and mobile applications used to access personalized recommendations in the field of sports in regard to viewing live sports broadcasts, following particular sports, teams, and players in (specify, e.g., soccer, football, basketball, baseball), aggregating information in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), following individual fantasy players in the field of fantasy leagues in (specify, e.g., soccer, football, basketball, baseball), providing information in the field of sports betting and how to place sports bets, and aggregating online gaming information in the field of betting services in relation to sports” in Class 42.

Applicant’s goods or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

CLASSIFICATION

If applicant adopts the suggested amendment of the identification of goods or services, then applicant must amend the classification to International Classes 9, 41 and 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

ADDITIONAL CLASSES

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and 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 goods and services that are classified in at least three classes; however, applicant submitted a fees sufficient for only two 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.

 

RESPONSE GUIDELINES

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

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

 

 

 

 

/Paula Mahoney/

Trademark Examining Attorney

Law Office 119

571-272-9191

paula.mahoneyuspto.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 30, 2019 for

U.S. Trademark Application Serial No. 88630258

 

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. 

 

 

/Paula Mahoney/

Trademark Examining Attorney

Law Office 119

571-272-9191

paula.mahoneyuspto.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 30, 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.”