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: February 13, 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).

 

SUMMARY OF ISSUES

• Identification/Classification of Goods/Services Requirement
• Clarification of Number of Classes to be Registered Requirement
• Multi-Class Application Guidelines
• Entity Requirement
• Color Claim & Description of the Mark Requirement

 

IDENTIFICATION/CLASSIFICATION OF GOODS/SERVICES REQUIREMENT

 

The identification of goods and/or services contains indefinite wording that requires clarification, as outlined below.

 

Applicant must clarify the wording “digital advertising distributed via an embedded streaming multimedia player” in the identification of services in International Class 035 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 services. Further, this wording could identify goods and/or services in more than one international class. For example, “distribution of digital advertising materials” is in International Class 035 and “graphic design of digital advertising materials,” is in International Class 042.

 

The wording “online advertising distribution services” in the identification of services is indefinite and must be clarified because the nature of the services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, it is unclear is the applicant is distributing advertising materials online or if the applicant merely offers their services online but includes numerous forms of advertising distribution such as “advertising flyer distribution for others.” Therefore, the applicant should clarify their provided services.

 

Applicant has included the term “and/or” in the identification of services. 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 services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services because it is unclear if the provided SAAS will feature all of the listed functions or only some of the listed function.

 

An application must specify, in an explicit manner, the particular 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 services, if appropriate, or rewrite the identification with the “and/or” deleted and the services specified using definite and unambiguous language. 

 

The identification for “providing an online software platform for creating interactive digital content and content sharing, displaying and/or embedding on websites” in International Class 042 is indefinite and too broad and must be clarified to specify whether the format is downloadable or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable goods are in International Class 009, whereas providing their temporary, online non-downloadable use is a service in International Class 042. See TMEP §1402.03(d).

 

The identification for “providing temporary use of on-line non-downloadable software and applications for use in monetizing digital media content” in International Class 042 is indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Specifically, “monetizing digital media content,” is not a known software function and reads more like the intend outcome of using the software than the function of the software. Therefore, the applicant must specify the function of the software that allows consumers to monetize digital media content.

 

Applicant should also note the additional necessary specifications included in the suggested identification below.

 

Applicant may adopt the following wording, if accurate (suggested edits in bold):

 

Class 009: Downloadable software platform for creating interactive digital content and for sharing, displaying, and embedding content on websites

 

Class 035: [applicant to specify services provided related to digital advertising in Class 035, e.g. Distribution of digital advertising materials, etc.], distributed via an embedded streaming multimedia player; Advertising services, namely, creating branded content advertising campaigns; Online advertising distribution services, namely, [applicant to specify the nature of the services provided, e.g. distribution of advertising materials online, etc.]

 

Class 042: [applicant to specify services provided related to digital advertising in Class 042, e.g. graphic design of digital advertising materials, etc.] to be distributed via an embedded streaming multimedia player; Software as a service (SAAS) services featuring software for creating, displaying, sharing, and embedding content on webpages to display video, interactive, and advertising content; Software as a service (SAAS) services featuring software for creating interactive digital content and for sharing, displaying, and embedding content on websites; Providing online non-downloadable software platform for creating interactive digital content and for sharing, displaying, and embedding content on websites; Providing temporary use of online non-downloadable software and applications for use in [applicant to specify the function of the software, e.g. creating interactive digital content and for sharing, displaying and embedding created content on websites, etc.] in order to monetize digital media content

 

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.

 

CLARIFICATION OF NUMBER OF CLASSES TO BE REGISTERED REQUIREMENT

 

The application identifies goods and/or services that could be classified in at least 3 classes; however, applicant submitted a fee sufficient for only 2 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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.

 

MULTIPLE-CLASS APPLICATION ADVISORY

 

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 already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that could be classified in at least 3 classes; however, applicant submitted a fee sufficient for only 2 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

ENTITY REQUIREMENT

 

Applicant sets forth in the application the legal entity “limited company” and applicant’s country of organization as Israel. The designation “limited company” is typically an acceptable entity designation in a U.S. application for applicants from Commonwealth countries. See TMEP §803.03(i). However, applicant has identified an country of organization that is not a Commonwealth country (see http://www.thecommonwealth.org/Internal/142227/members/). 

 

Therefore, applicant must clarify the legal entity in the application. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). Applicant may do so by (1) specifying the entity type that would be the equivalent of a “limited company” in the United States or (2) providing a description of the nature of the foreign entity that is applying. See TMEP §803.03(i).

 

COLOR CLAIM & DESCRIPTION OF THE MARK REQUIREMENT

 

Applicant must amend the color claim and description to identify all the colors in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii). The following colors have been omitted from the color claim: black.

 

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 light blue, dark blue, purple, and black are claimed as a feature of the mark.

 

Description: The mark consists of the stylized wording “EX·CO” where the letter “E” is made of three black parallel horizontal bars with small squares to the left of each. The top square is light blue, the middle square is dark blue, and the bottom square is purple. The rest of the lettering, “X·CO”, is in black. The color white represents background and is not claimed as a feature of the mark.

 

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. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

    

 

/Fox, Lyal/

Lyal Fox

Examing Attorney

Law Office 113

571-270-7884

lyal.fox@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 February 13, 2020 for

U.S. Trademark Application Serial No. 88678918

 

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. 

 

 

/Fox, Lyal/

Lyal Fox

Examing Attorney

Law Office 113

571-270-7884

lyal.fox@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 13, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”