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 07, 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 Results

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES that applicant must address:

• Advisory – Prior-Pending Application
• Requirement – Amend Identification of Goods and Services
• Requirement – Request for Information – Sheet Music
• Requirement – Request for Information
• Requirement – Amend Mark Description
• Advisory – Possible Failure to Function Refusal

 

Advisory – Prior-Pending Application

 

The filing date of pending U.S. Application Serial No. 88347702 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Upon receipt of applicant’s response resolving the following requirements, action on this application will be suspended pending the disposition of U.S. Application Serial No. 88347702.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS AND SERVICES

 

The wording “downloadable computer applications featuring video and computer games” and “downloadable files in the field of entertainment, namely, ringtones, graphics, images, electronic games, via a global computer network and wireless devices” in the identification of goods is indefinite and must be clarified because the specific nature/type of the goods, such as “downloadable computer applications for playing video and computer games,” etc., must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Entertainment services, namely, providing information in the field of gaming,” “entertainment services, namely, providing a website featuring non-downloadable instructional electronic media, multimedia content, videos, movies, pictures, images, text, photos, user- generated content, audio content, gaming content in the field of electronic games,” “providing temporary online non-downloadable game software,” “providing temporary online non-downloadable computer applications featuring video and computer games,” “providing temporary use of online non-downloadable software for gaming,” and “providing online non-downloadable software that allows users to capture, create, edit, store, manage, view, upload, download, transmit, stream, post, tag, and link to content in the form of photos, images, virtual reality images, graphics, videos, and other audiovisual and video content” in the identification of services is indefinite and must be clarified because the specific nature/type of the services, such as “entertainment services, namely, providing information in the field of casino gaming,” etc., must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Class 9: Downloadable game software; downloadable software for streaming audio and video content on mobile phones, tablets, personal computers, and televisions; downloadable computer applications [specify function, such as for playing] video and computer games; downloadable ring tones for mobile phones; downloadable files in the field of entertainment, namely, ringtones for mobile phones, graphics [specify type, such as for mobile phones], images in the field of [specify field, such as automobiles], electronic [specify type, such as downloadable computer] games, and music, via a global computer network and wireless devices

 

Class 35: acceptable as written

 

Class 41: Entertainment services, namely, providing information in the field of [specify type, such as casino] gaming; entertainment services, namely, providing a website featuring non-downloadable instructional electronic media in the nature of [specify type, such as electronic books in the field of computer games], multimedia content in the nature of [specify type, such as providing temporary use of non-downloadable interactive video games], videos in the field of [specify field, such as financial planning], movies featuring [specify content, such as drama], pictures featuring [specify content, such as soccer players], images containing [specify content, such as soccer players], text in the nature of [specify type, such as blogs featuring reviews of video games], photos featuring [specify content, such as soccer players], user-generated content in the nature of [specify type, such as blogs featuring personal stories], audio content in the nature of [specify type, such as non-downloadable pre-recorded music files], and gaming content in the nature of [specify type, such as providing temporary use of non-downloadable electronic games] in the field of electronic games; entertainment services, namely, providing on-line computer games; providing temporary use of online non-downloadable game software; providing temporary use of online non-downloadable computer applications [specify function, such as for playing] video and computer games; providing temporary use of online non-downloadable software for [specify type, such as casino] gaming; entertainment services, namely, non-downloadable ringtones, pre-recorded music, and graphics presented to mobile communications devices via a global computer network

 

Class 42: Providing temporary use of online non-downloadable software and applications for accessing streaming audio and video files, text files and multimedia files for use in gaming; providing temporary use of online non-downloadable software that allows users to capture, create, edit, store, manage, view, upload, download, transmit, stream, post, tag, and link to content in the form of photos, images, virtual reality images, graphics, videos, and other audiovisual and video content

 

Applicant’s goods and 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 services or add goods and 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 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 services will further limit scope, and once goods and 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.

REQUIREMENT – REQUEST FOR INFORMATION – SHEET MUSIC

 

To permit proper examination of the application, applicant must submit additional information about applicant’s mark.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Specifically, applicant must submit sheet music showing full scoring of the sound mark, i.e., sheet music showing the key(s), meter(s), and musical notation and duration of each note.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

REQUIREMENT – REQUEST FOR INFORMATION

 

Applicant is advised that applicant must have a bona fide intent to use the applied for sound as a trademark or service mark within the definition of the Trademark Act Sections 1, 2, 3, and 45. See 15 U.S.C. §§1051-1053, 1127; 37 C.F.R. §2.63(b). Based on the nature of the applied for mark as a non-traditional device not commonly used as a source identifier for the applied for goods, applicant must provide additional information about applicant’s use of the sound to indicate how this sound will act as an inherently distinctive source identifier for the applied for goods.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §§814, 1402.01(e).  

 

Specifically, applicant must respond to all of the following questions:  

Is an example of the sound emanating from the goods, their packaging, or a point-of-sale display available?   

• If so provide examples of the sound emanating from the goods, their packaging, or a point-of-sale display.   
• If an example of the sound used on goods, their packaging, or a point-of-sale display is unavailable, please describe in detail when and how the sound will be produced in on the goods, their packaging, or a point-of sale-display. 

 

Is the sound used in the operation of the goods?   

• If yes, please provide examples of the sound emanating from the goods in the course of operation of the goods.   
• If an example of the sound emanating from the goods in the course of operation is unavailable, please provided a detailed explanation how the sound is produced during the operation of the goods.  

 

Is an example of the sound used in advertising for the goods available?  

• If yes, please provide an example.  

• If an example is unavailable, please describe in detail how the sound is produced in advertising the goods? 

 

Is an example of the sound used in advertising the services available?  

• If yes, please provide the example.  
• If an example is unavailable, please describe in detail how the sound is produced in advertising the goods and/or services? 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

REQUIREMENT – AMEND MARK DESCRIPTION

 

The drawing includes a description of the mark that indicates it is a sound mark.  If this is the case, then applicant must submit a more detailed written description of the mark.  37 C.F.R. §2.52(e); TMEP §807.09.  Specifically, applicant must submit 1) a detailed description of the sound, such as musical instruments making the sound, the key(s), and the meter(s), 2) the notes of the sound (A, E#, Bb, etc.), 3) the duration of the notes (quarter note, half note, eighth note, etc.), and 4) the octave of each note. 

 

For example, the following description would be acceptable, if accurate:

 

The mark is a sound mark. The mark consists of a {specify instrument producing sound or characterization of sound, e.g., piano playing backwards} in the key of {specify key, e.g., C Major} in {specify meter, e.g., four-four time}. The first note is {specify each note and duration of notes, e.g., an A3 sixteenth note followed by a C#4 sixteenth note, etc.}.

 

Advisory – Possible Failure to Function Refusal

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, is a non-distinctive sound for the applied for goods and services that is NOT registrable on the Principal Register without sufficient proof of acquired distinctiveness.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1052, 1127; see Gen. Electric Broad, 199 USPQ 560, 563 (TTAB 1978); see In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); see In re Powermat Inc., 105 USPQ2d 1789, 1793 (TTAB 2013); TMEP §1202.15 

 

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.    

Assistance

 

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 requirements 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. 

 

 

/Joan M. Blazich/

Joan M. Blazich

Trademark Examining Attorney

Law Office 122

(571) 272-7810

joan.blazich@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 07, 2020 for

U.S. Trademark Application Serial No. 88741304

 

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. 

 

 

/Joan M. Blazich/

Joan M. Blazich

Trademark Examining Attorney

Law Office 122

(571) 272-7810

joan.blazich@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 07, 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.”