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 13, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’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).

 

SUMMARY OF ISSUES:

 

• Amendment to the Identification Required
• Multiple Class Application Requirements
• Amendment to the Mark Description Required

 

AMENDMENT TO THE IDENTIFICATION REQUIRED

 

Applicant must clarify the wording in the identification of goods and services because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods and/or services are.  Further, this wording could identify goods and/or services in more than one international class as noted below.  

 

Specifically, the identification for software is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

In addition, wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Applicant may substitute the following wording, if accurate:

 

Class 009:       Apparatus for recording, transmission or reproduction of sound or images; Downloadable computer software for downloading, viewing and streaming audiovisual and multimedia content via the internet and global communications networks; Downloadable computer software for searching, organizing, and recommending multimedia content; Downloadable computer software for purchasing, accessing, and viewing movies, tv shows, videos, and multimedia content; Downloadable computer software to enable transmission, access, organization, and management of films, videos and images via the Internet and other communications networks; Downloadable computer software for {specify function} for social networking; Downloadable computer software for use in telecommunications, namely, telecommunications software for providing single user and multiple user access to a global computer network; Downloadable computer software for creating, recording, playing and reproducing audio and visual images and sound; animated cartoons, namely, pre-recorded CDs and DVDs featuring animated cartoons; recorded computer software for {specify function} in the field of animated cartoons; camcorders; cameras; cases especially made for photographic apparatus and instruments; computer keyboards; computer memory devices; computer operating programs, recorded; computer peripheral devices; computers; data processing apparatus; downloadable image files containing photographs and pictures in the field of films, movies, television programmes and animated cartoons; downloadable music files; electronic notice boards; headphones; laptop computers; Computer hardware, namely, computer monitors; Computer mouse; mouse pads; notebook computers; portable media players; computer hardware apparatus with multimedia and interactive functions; sound, video and electronic data recordings featuring music, films and movies; digital audio and video players with multimedia and interactive functions; downloadable computer software for telecommunication and communication, namely, for communicating with computer network users via local or global communications networks, namely the internet, intranets, extranets, television, mobile communication, cellular and satellite networks; telephones; mobile telephones; parts mobile telephone covers; mobile telephone cases; downloadable computer software for database synchronization; downloadable computer programs for accessing, browsing and searching online databases; downloadable computer software for connecting to online film, movie and television subscription service, namely, software for downloading, recording and playing films, movies and television programmes; downloadable computer software for enabling users to play and program entertainment-related audio, video, text and multi-media content, namely, films, movies and television programmes; entertainment-related audio, video, text and multimedia content namely, films, movies and television programmes [NOTE: vague, no suggestion]; downloadable audio and video recordings featuring music, comedy, drama, action, adventure and animation; downloadable computer software for transmitting, streaming, and downloading music, video, and audiovisual content, namely, music, videos, films and movies; downloadable software for {specify function} provides featuring music, video, and audiovisual content in the field of entertainment via a subscription service; downloadable films and movies featuring {indicate subject matter} provided via a video-on-demand service; digital media streaming devices; downloadable computer software for downloading, storing and viewing videos, films, movies, and multimedia content

 

Class 041:       Entertainment services in the nature of live {specify nature of performance, e.g., dance, musical, magic} performances [NOTE: the wording “entertainment services” is too broad, applicant must indicate a specific service]; Providing non-downloadable movies and television shows via a video-on-demand service; providing a website featuring non-downloadable videos in the nature of television shows and movies, and multimedia entertainment content, as well as information, reviews, and recommendations regarding television shows, movies, and multimedia entertainment content; rental and distribution services featuring entertainment content, namely, movies and television shows [NOTE: vague, no suggestion];  providing a website featuring non-downloadable videos in the field of general interest; providing online videos in the field of general interest, not downloadable; provision of non-downloadable films and movies via a video-on-demand service; entertainment services, namely, providing on-line reviews of movies and films; production of radio and television programmes; television entertainment in the nature of an ongoing television program featuring news and entertainment [NOTE: vague, no suggestion] in the field of movies, new television shows, music, sports and celebrity personalities and games; providing information, listings, and news regarding television programming and entertainment in the nature of {specify form of entertainment}; on-going entertainment programs broadcast via radio, cellular, and wireless communication, the internet, electronic communications networks, and computer networks in the fields of news, weather, sports, travel, current events, reference information, career information, computing, technology, shopping, auctions, movies, theatre, music, health, education, science, finance, and investing [NOTE: indefinite and broad, no suggestion]; distribution of multimedia entertainment content via computer networks; publication of electronic books online; publication of on-line journals, namely, blogs featuring user-defined content; Movie studio services; Entertainment and educational services, namely, providing a website featuring user-generated content, namely, electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content, and related information via the internet and other communications networks on a wide variety of topics and subjects [NOTE: indefinite and broad, no suggestion]; online digital video, audio and multimedia entertainment publishing services; online digital publishing services

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or 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 goods and/or 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/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three (3) classes; however, applicant submitted a fee(s) sufficient for only two (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).

 

Fee(s) for Additional Class(es)

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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 TO OFFICE ACTION

 

Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) Applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office Action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about Applicant’s rights. See TMEP §§705.02, 709.06.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

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

 

 

/Holland, Jami/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 122

(571) 272-7806

Jami.Holland@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 13, 2019 for

U.S. Trademark Application Serial No. 88632566

 

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. 

 

 

Holland, Jami

 

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 13, 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.”