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:  April 14, 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 of the Office Records

 

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 of Services- Broad/Indefinite Wording
• Translation Required 

 

Identification of Services– Broad/Indefinite Wording

 

The following wording in bold in the identification of good and services needs clarification because it is too broad and could include goods/services classified in other international classes.  See TMEP §§1402.01, 1402.03.

 

International Class 041: Education and entertainment services, namely, providing a website featuring audio clips, video clips, musical performances, musical videos, film clips, photographs, and related entertainment information

 

 

Applicant must use the common commercial or generic names for the goods/services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name.  See TMEP §1402.03(a).

 

Applicant may change this wording to following if accurate. 

 

International Class 009: Downloadable software for streaming audio and video content on mobile phones, tablets, personal computers, and televisions; downloadable software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; application program interface (API) that enables developers to integrate video content and functionality into websites, software applications, and devices; downloadable audio clips in the field of {indicate field or subject matter of audio recordings}, downloadable video clips in the field of {indicate field or subject matter}, downloadable videos of musical performances, downloadable musical videos, and downloadable film clips in the field of {indicate field or subject matter}, downloadable photographs

 

International Class 041: Education and entertainment services, namely, providing a website featuring non-downloadable audio clips in the field of {indicate field or subject matter of audio recordings}, video clips in the field of {indicate field or subject matter}, videos of musical performances, musical videos, film clips in the field of {indicate field or subject matter}, photographs, and related entertainment information

 

International Class 042: Providing a video sharing portal, namely, a web site featuring temporary use of non-downloadable software allowing web site users to upload on-line videos for sharing with others for entertainment and educational purposes; Providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks; Providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; Providing temporary use of non-downloadable software to enable content providers to track multimedia content; Providing temporary use of non-downloadable analytics software, namely, software for calculating and reporting statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games, and other user generated content

 

See TMEP §1402.01.

 

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Translation Required 

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “TANGI” in the mark is “WAKE UP”.  TMEP §809.03.  See attached translation evidence.

 

 

 

 

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

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 April 14, 2020 for

U.S. Trademark Application Serial No. 88777522

 

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. 

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 April 14, 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.”