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 15, 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.

 

SUMMARY OF ISSUES:

• Search Deferred
• Claim of Section 44(d) Priority Denied – Information Required under 37 C.F.R. §2.61(b)
• Signed Declaration Required
• Identification of Goods and Services
• Multiple-Class Application Requirements

 

SEARCH OF USPTO DATABASE OF MARKS DEFERRED

 

The trademark examining attorney will defer a search of the USPTO database of registered and pending marks for potentially conflicting marksuntil applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

The applicant should note the following refusal and requirements:

 

CLAIM OF SECTION 44(d) PRIORITY DENIED – INFORMATION REQUIRED UNDER 37 C.F.R. §2.61(b) 

 

The claim of priority under Trademark Act Section 44(d), 15 U.S.C. §1126(d), is denied because the record suggests the applicant in the present application was not the owner of the foreign application upon which the claim of priority is based as of the U.S. application filing date.  See TMEP §1005.  The applicant is required to provide additional information concerning this Section 44(d) priority claim.  37 C.F.R. §2.61(b). 

 

The U.S. application sets forth the owner as ENDEAVOR SYSTEMS LIMITED, a New York Limited Liability Company, while the foreign application sets forth the owner as ENDEAVOR SYSTEMS LIMITED, a United Kingdom entity.  See the attached evidence from Canada’s trademark office website.  In an application with a claim of priority filed under Section 44(d), the applicant must be the owner of the foreign application on the filing date of the U.S. application.  TMEP §1005; see In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing date.  TMEP §1005; see 37 C.F.R. §2.61(b). 

  

Specifically, the applicant must respond to the following: 

 

·        Was the foreign application upon which the Section 44(d) priority claim was made assigned to the applicant on or before the filing date of the U.S. application? 

o   If not, the applicant must so-specify. 

o   If so, the applicant must submit either (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application. 

 

37 C.F.R. §2.61(b); see also TMEP §§814, 1005, 1006. The failure to comply with an Office requirement is grounds for refusal of registration.  In re Carlton Cellars, LLC, 2020 USPQ2d 10150 (TTAB 2020). 

 

If applicant can prove the foreign application was assigned to applicant on or before the filing date of the U.S. application, the Section 44(d) basis can be retained.  See TMEP §1005.  In this case, the effective filing date of the application will remain the date on which the foreign application was first filed in the foreign country.  See 37 C.F.R. §2.83(a); TMEP §1208.01. 

 

Alternatively, if the applicant cannot prove that it was the owner of the foreign application on the U.S. application filing date, the effective filing date change to the U.S. application filing date.  Accordingly, the examining attorney will delete the priority claim from the Trademark database and conduct a new search of the USPTO’s record for conflicting marks.  See TMEP §§206.04, 1005. 

 

If applicant did not own the foreign application or registration on or before the date of filing in the United States, applicant is not entitled to the Section 44(d) priority filing date or Section 44(e) as a basis for registration.  TMEP §§1005, 1006.  In that case, the applicant must rely solely on Section 1(b) as the basis for registration.  See TMEP §806.04-.04(b). 

 

Applicant should note the following additional requirements.

 

SIGNED DECLARATION REQUIRED 

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02.   

  

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).   

  

For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.  

 

Applicant should note the following additional requirements.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The wording specified below in the in the identification of goods and services is indefinite and overly broad and could include goods and services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant must amend this wording to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods and services have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses and describe or explain the nature of the services using clear and succinct language.  See id.

 

The identification for software/applications in International Class 009 is indefinite and too broad and must be clarified to specify whether the 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.  See TMEP §1402.03(d).

 

The identification for computer games in International Class 009 is indefinite and too broad and must be clarified to specify 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 an entertainment service in International Class 41.  See TMEP §1402.03(d).   

 

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).

 

Applicant may adopt the following wording, if accurate:   

 

IC 009:            Computer hardware; Computer hardware and peripheral devices and {specify type, e.g., downloadable, recorded} computer software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; Computer software, namely, downloadable computer software for word processing, {specify type, e.g., downloadable, recorded} computer software for document management, for database integration, for producing financial models, for use in database management; {specify type, e.g., downloadable, recorded} computer software for authorizing access to databases; {specify type, e.g., downloadable, recorded} computer software for creating searchable databases; {specify type, e.g., downloadable, recorded} computer software for use in customer relationship management (CRM); {specify type, e.g., downloadable, recorded} computer software to automate data warehousing; {specify type, e.g., downloadable, recorded} computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer software, namely, {specify type, e.g., downloadable, recorded} communications software for connecting computer network users; {specify type, e.g., downloadable, recorded} computer software for use in providing multiple user access to a global computer information network; {specify type, e.g., downloadable, recorded} e-commerce software to allow users to perform electronic business transactions via a global computer network; {specify type, e.g., downloadable, recorded} computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, {delete duplicate function “for controlling and managing access server applications,”} for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; {specify type, e.g., downloadable, recorded} computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; {specify type, e.g., downloadable, recorded} computer games; computer games downloadable from a global computer network; {specify type, e.g., downloadable, recorded}  computer games for use on mobile and cellular phones; {specify type, e.g., downloadable, recorded} computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; interface cards for data processing equipment in the form of printed circuits; computer networking hardware and data communications equipment, namely, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs; computer memory devices, namely, flash memory cards, flash memory expansion modules, memory boards, random access memory cards and secure digital (SD) memory cards; electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals; electronic circuits and printed electronic circuits; electric wires for communication equipment; graphite and fuel cell electrodes; telephones; radio, television and satellite aerials; batteries, namely, electric storage batteries, galvanic batteries, general purpose batteries, solar batteries, and batteries for cell phones, watches and cameras; microprocessors; computer keyboards; motion picture films being video recordings featuring music and artistic performances, education in the field of {specify, e.g., art}, entertainment being {specify type e.g., plays}, fashion, sports and culture {specify type, e.g., events}

                                   

IC 035:            Provision of {specify type, e.g., business} information and advisory services relating to e-commerce; provision of information relating to market studies; provision of market research information; {delete duplicate entry of “provision of information and advisory services relating to e-commerce”}; advertising and business management consultancy; personnel recruitment; personnel management consulting; advertising agency services; advertising the goods and services of others; mediation of contracts for purchase and sale of products and services; advertising services for promoting the brokerage of stocks and other securities for others; advertising services of a radio and television advertising agency; negotiation of business contracts for others; business management and organization consultancy; computerized file management; rental of advertising space; rental of advertising space on web sites; leasing of office equipment; rental of office machinery and equipment; market analysis and research services; market research studies; computer database management services; retail store services featuring clothing, books, computer equipment, computer software, furniture, grocery items, jewellery, food, cosmetics, toys, automobile parts and audio equipment

 

IC 041:           providing temporary use of on-line, non-downloadable computer games; providing temporary use of on-line, non-downloadable computer games for use on mobile and cellular phones;

 

IC 042:           providing temporary use of on-line, non-downloadable computer software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; providing temporary use of on-line, non-downloadable computer software for document management, for database integration, for producing financial models, for use in database management; providing temporary use of on-line, non-downloadable computer software for authorizing access to databases; providing temporary use of on-line, non-downloadable computer software for creating searchable databases; {providing temporary use of on-line, non-downloadable computer software for use in customer relationship management (CRM); providing temporary use of on-line, non-downloadable computer software to automate data warehousing; providing temporary use of on-line, non-downloadable computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; providing temporary use of on-line, non-downloadable computer software, namely, communications software for connecting computer network users; providing temporary use of on-line, non-downloadable computer software for use in providing multiple user access to a global computer information network; providing temporary use of on-line, non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network; providing temporary use of on-line, non-downloadable computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; providing temporary use of on-line, non-downloadable computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; {specify type, e.g., downloadable, recorded} computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use

 

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.

 

Applicant should note the following additional requirements.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 Sections 1(b) and 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 4 classes; however, applicant submitted fees 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The USPTO changed the federal trademark rules to eliminate the TEAS Regular application, which is now considered a “TEAS Standard” application.  See 37 C.F.R. §2.6(a)(iii).  The fee for adding classes to a TEAS Standard application is $275 per class.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

ADVISORY: TRADEMARK ATTORNEY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

RESPONSE GUIDELINES

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.    

 

 

/Sarah E. Kunkleman/

Sarah E. Kunkleman

Trademark Examining Attorney

Law Office 105

571-272-6151

sarah.kunkleman@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 15, 2020 for

U.S. Trademark Application Serial No. 88724169

 

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. 

 

 

/Sarah E. Kunkleman/

Sarah E. Kunkleman

Trademark Examining Attorney

Law Office 105

571-272-6151

sarah.kunkleman@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 December 15, 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.”