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:  March 25, 2020

 

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 Results

 

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 of Goods and Services

 

The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with additions and alterations in bold type. The italicized wording includes additional guidance and suggestions and the wording appearing with a strikethrough should be deleted.

 

Applicant may adopt the following identification of goods and/or services, if accurate:

 

CLASS 09: Electronic publications, downloadable, in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; downloadable image files containing {indicate content or subject matter}; pre-recorded USB flash drives featuring {indicate subject matter}

 

CLASS 16: Newsletters about {specify subject matter}; geographical maps; magazines in the field of {specify subject matter} (periodicals); posters; printed publications, namely, {indicate form of publications, e.g., books, hand-outs, workbooks} in the fields of {indicate subject matter(s) or field(s) of publications}; printed advertisement boards of paper or cardboard

 

CLASS 35: Advertising; publicity; organization of exhibitions for commercial or advertising purposes; marketing; on-line advertising on a computer network; radio advertising; telemarketing services; administration of consumer loyalty programs; bill-posting; outdoor advertising; television advertising; production of teleshopping programmes; production of teleshopping programs; pay per click advertising; web site traffic optimization; web site traffic optimization [examiner’s note: delete duplicate entry]; web indexing for commercial or advertising purposes, namely, {specify the nature of the services, e.g., compiling indexes of website information for commercial or advertising purposes}

 

CLASS 38: Telecommunications services, namely, electronic bulletin board services (telecommunications services); providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; telecommunications routing and junction services; telephone services; communications by telephone; communications by cellular phones; communications by computer terminals; transmission of digital files; video-on-demand transmission; wireless broadcasting; telex services; teleconferencing services; rental of telecommunication equipment; providing online forums or {indicate field or subject of forum}; message sending; information about telecommunication; providing access to databases; voice mail services; videoconferencing services

 

CLASS 41: Providing online videos, not downloadable, featuring {indicate subject matter e.g., music, mathematics instruction}

 

CLASS 42: Cloud computing featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; telecommunications technology consultancy; computer programming; computer software design; rental of computer software; computer system analysis; computer system consultancy; computer technology consultancy

 

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.

 

Mark Description and Color Claim

 

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).  Specifically, the color of the wording has been omitted from the color claim and mark description.  Additionally, applicant must clarify whether the color white is claimed as a feature of the mark.

 

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 yellow, red, blue, pink, green, purple, and grey are claimed as a feature of the mark.”

 

Description:  “The mark consists of a U-shaped design, composed of small squares of varying density transitioning from shades of green to blue to purple to pink to red to yellow, to the left of the literal element PLUS appearing in the color grey and in a stylized font. The color white appears for background purposes only and is not claimed as a feature of the mark.”

 

CONTACT INFORMATION

 

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.    

 

 

/Christine Martin/

Examining Attorney

Law Office 104

571-272-1630

christine.martin@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.