Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 10, 2020

 

This Office action is in response to applicant’s communication filed on 10/14/2020.

The trademark examining attorney notes that the following requirement(s) have been satisfied: Translation.  See TMEP §§713.02, 714.04. 

The following requirements are now made FINAL:  Definite goods and services.  See 37 C.F.R. §2.63(b).

 

 

 

FINAL: Identification of Goods and Services– Broad/Indefinite Wording

 

The following amended wording in bold in the identification of good and services continues to need clarification because the subject matter of the videos is too vague.  See TMEP §§1402.01, 1402.03.

 

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 do-it-yourself user-generated content, downloadable video clips in the field of do-it-yourself user-generated content, downloadable videos of musical performances, downloadable musical videos, and downloadable film clips in the field of do-it-yourself user-generated content and downloadable photographs 

 

International Class 041: Education and entertainment services, namely, providing a website featuring non-downloadable audio clips in the field of do-it-yourself user-generated content, video clips in the field of do-it-yourself user-generated content, videos of musical performances, musical videos, film clips in the field of do-it-yourself user-generated content, photographs, and related entertainment information

 

User generated content is acceptable for class 042 because it is a technological service, not an entertainment content service or good. Applicant must clarify the subject matter of the do it yourself content, e.g., cooking, home repairs, automobile repairs.

 

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 do-it-yourself do-it-yourself {specify, e.g., home repairs}, downloadable video clips in the field of do-it-yourself do-it-yourself {specify, e.g., home repairs}, downloadable videos of musical performances, downloadable musical videos, and downloadable film clips in the field of do-it-yourself do-it-yourself {specify, e.g., home repairs} and downloadable photographs 

 

International Class 041: Education and entertainment services, namely, providing a website featuring non-downloadable audio clips in the field of do-it-yourself {specify, e.g., home repairs}, video clips in the field of do-it-yourself do-it-yourself {specify, e.g., home repairs}, videos of musical performances, musical videos, film clips in the field of do-it-yourself do-it-yourself {specify, e.g., home repairs}, 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.

 

Applicant’s Response and Partial Abandonment

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods and services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: 

 

International Class 009: downloadable audio clips in the field of do-it-yourself user-generated content, downloadable video clips in the field of do-it-yourself user-generated content, and downloadable film clips in the field of do-it-yourself user-generated content

 

International Class 041: non-downloadable audio clips in the field of do-it-yourself user-generated content, video clips in the field of do-it-yourself user-generated content, film clips in the field of do-it-yourself user-generated content,

 

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following:

 

 

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 videos of musical performances, downloadable musical videos, and downloadable photographs 

 

International Class 041: Education and entertainment services, namely, providing a website featuring non-downloadable videos of musical performances, musical videos, 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

 

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

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 November 10, 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 November 10, 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.”