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:  May 09, 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:

·       SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

·       IDENTIFICATION OF GOODS – AMENDMENT REQUIRED

·       APPLICATION SIGNATURE REQUIRED

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4508816.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applied-for mark is “NAVER” for “Sorting machines for industry; Machine coupling and transmission components except for land vehicles; Motors and engines (except for land vehicles); Taps (parts of machines, engines, motors); Stamping machines; Vending machines; Gas pumps (gas station equipment); Electric lawn mowers; Electric door opening and closing apparatus; Cargo handling machines; Civil engineering machinery; Stone-working machines; Milking machines; Incubators for eggs; Food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines; Machines for plastics working; Robots” in international class 7, “Computer programs for pre-recorded games; Computer programs, recorded; Computer programs, downloadable; Mouse (computer peripheral); Mouse pads; Computer software for wireless content delivery; Computer programmes for document management; Video game cartridges; Software for processing images, graphics and text; Computer programs for images, sound and video; Software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded; Downloadable electronic music; Pre-recorded non-musical electronic media except for computer software; Animated cartoons; Slide film; Downloadable electronic publications; Downloadable electronic books” in international class 9, “  Interior decorations for vehicles; Bodies for vehicles; Saddles for bicycle and motocycles; Apparatus for locomotion by land, air and water; Vessels (boats and ships); Air vehicles; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles; Tractors for agricultural purposes; Motive power machines for land vehicles; Power transmissions for land vehicles; Bearings for land vehicles; Motors for land vehicles” in international class 9, “Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; Opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others; Computerized file management; Auctioneering provided on the internet” in international class 35, “Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services; Instant messenger service; Providing internet chatrooms; Transmission of message/image via the internet; Internet telephony services; Electronic bulletin board services (telecommunications services); Leasing access time to a computer database; Transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting services” in international class 38, “Production of radio and television programmes; Production of animated films; Reservation of theatre tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable; Education information; Online educational examination services; Education courses through the internet; Internet education instruction; Computer software academies; Provision of game information; Game services provided on-line; Booking of seats for sports competitions; On-line game service” in international class 41, and “Industrial design services; Development of game software; Rental of a database server (to third parties); Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer sites (web sites); Provision of internet search engines; Provision of internet security programs; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information” in international class 42.

 

U.S. Registration No. 4508816 is for the mark “NAVER” and is used in connection with “Computer game programs recorded on optical discs including CDs and DVDs; Computer programs for games; Computer programs for performing internet searches and displaying the search results; Computer programs for creating advertisements; Downloadable computer programs for games; Downloadable computer programs for performing internet searches and displaying the search results; Downloadable computer programs for creating advertisements; Computer mice; Mouse pads; Computer software for wireless content delivery; Computer programs for document management; Video game cartridges; Software for processing images, graphics and text; Computer programs for editing images, sound and video; Software to control and improve audio equipment sound quality; Apparatus for games adapted for use with an external display screen or monitor; Apparatus for the recording, transmission or reproduction of sound and images; Recorded computer software, namely, computer game software recorded on optical discs, namely, CDs and DVDs; Recorded computer software, namely, computer software for performing internet searches and displaying the search results, said software recorded on optical discs, namely, CDs and DVDs; Recorded computer software, namely, computer software for creating advertisements, said software recorded on optical discs, namely, CDs and DVDs; Downloadable electronic music for downloading via the internet and wireless devices; Pre-recorded electronic media in the nature of optical discs including CDs and DVDs in the field of dramatic productions without music; Video disks and video tapes with recorded animated cartoons; Exposed slide films; Downloadable electronic publications in the nature of magazines in the field of internet business; Downloadable electronic books in the field of internet business” in International Class 9, “On-line advertising on a computer network; Provision of advertising information; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Business information; News clipping services; Commercial information agencies; Marketing research; Market and public opinion polling; Provision of commercial information via the internet; Personnel recruitment; Providing of job information, namely, providing information on the topic of determining job satisfaction; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerized databases; Computerized file management; On-line auctioneering services” in international class 35, “Communications by fiber optic networks; transmission of information on optical telecommunication networks; providing access to databases; electronic message sending; providing access to wireless internet; providing access to on-line databases; voice mail services; providing e-mail services; providing multiple user access to computer networks; providing internet chatrooms; computer aided transmission of messages and images; internet telephone services; electronic bulletin board services; computer data transmission services; transmission of stock market information with the help of telecommunication media; internet broadcasting” in international class 38, “Production of radio and television programs; Production of animated cartoons; Reservation of theater tickets; Entertainment information; Distribution of motion picture films; Film information; Providing online, non-downloadable electronic publications in the nature of magazines in the field of internet business; Providing information about the field of education; On-line educational examination, namely, administering standardized tests on-line; Providing on-line classes in the field of internet use; Instruction in the field of internet use; Computer software academies, namely, providing courses of instruction in the field of how to use computer software; Providing information on-line relating to computer games; Providing temporary use of a series of nondownloadable computer games; Booking of seats for sports competitions; Providing a website featuring computer game” in international class 41, and “Industrial design; Development of game software; Rental of a database server to third parties; Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting web sites; Providing search engines for the internet; Providing internet security programs, namely, providing temporary use of non-downloadable computer software that allows users to take measures to protect the security of their internet connections; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Development of computer game software; Updating of computer software; Providing meteorological information; data search in computer files for others, namely, providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via global computer networks” in international class 42.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is “NAVER” and registrant’s mark is “NAVER”.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the Goods and Services

 

The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, both applicant and registrant use the marks on identical and closely related goods and services. Specifically, both marks are used in connection with “video game cartridges”, “mouse pads”, “Online advertising on a computer network”, “marketing services”, “business information”, “Communications by fibre optic networks”, “providing access to wireless internet”, “entertainment information”, “Booking of seats for sports competitions”, “industrial design”, and “development of game software”.

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “Computer programs, recorded; Computer programs, downloadable”, “Providing online electronic publications, not downloadable” and “Downloadable electronic books”, which presumably encompasses all goods and services of the type described, including registrants’s more narrow “electronic books in the field of internet business”, “Recorded computer software, namely, computer game software recorded on optical discs, namely, CDs and DVDs; Recorded computer software, namely, computer software for performing internet searches and displaying the search results, said software recorded on optical discs, namely, CDs and DVDs; Recorded computer software, namely, computer software for creating advertisements, said software recorded on optical discs, namely, CDs and DVDs”, “Computer programs for creating advertisements; Downloadable computer programs for games; Downloadable computer programs for performing internet searches and displaying the search results; Downloadable computer programs for creating advertisements”,  and “Providing online, non-downloadable electronic publications in the nature of magazines in the field of internet business”.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods and services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and services are related.

 

Accordingly, the goods and services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.

 

Therefore, upon encountering “NAVER” and “NAVER” used on the identified goods and services, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source. Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4508816. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below

 

Advisory

 

If the mark in the cited registration is owned by applicant, applicant may provide evidence of ownership of the mark by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)       Submit copies of documents evidencing the chain of title; or

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration No. 4508816.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

IDENTIFICATION OF GOODS – AMENDMENT REQUIRED

 

The identification of goods and services is indefinite and must be clarified because several of the goods and services listed are unclear as to the specific nature, type, or purpose of the goods and services being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must therefore clarify the identification as noted in bold below.

 

The identification for “computer programs” and “computer software” in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) 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 a service in International Class 42.  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).

 

The identification of goods and services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.

 

Applicant may adopt the following identification, if accurate:

 

            Class 7

 

Sorting machines for industry, namely, {specify goods of these types in class 7 e.g., Machines for sorting {indicate items sorted, e.g., fruit, recycled bottles, machine parts} and removing non-conforming materials}}; Machine coupling and transmission components except for land vehicles; Motors and engines except for land vehicles; Taps being parts of machines, engines, motors; automatic Stamping machines; Vending machines; Gas pumps being gas station equipment, namely, {specify goods of these types in class 7 e.g.,             Fuel pumps for service stations}; Electric lawn mowers; Electric door opening and closing apparatus, namely, {Specify goods of these types in class 7 e.g., Electric door opening and closing system}; Cargo handling machines; Civil engineering machinery, namely, {Specify goods of these types in class 7 e.g., Concrete construction machines}; Stone-working machines; Milking machines; Incubators for eggs; electric Food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines, namely, {specify goods of these types in class 7 e.g., Electric washing machines for industrial purposes}; Machines for plastics working; industrial Robots

 

            Class 9

 

Computer programs for pre-recorded games; Computer programs, recorded for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Computer programs, downloadable for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; computer Mouse being computer peripherals; Mouse pads; Downloadable Computer software for wireless content delivery; Downloadable Computer programmes for document management; Video game cartridges; Downloadable software for processing images, graphics and text; Downloadable Computer programs for {specify function of the software e.g., viewing} images, sound and video; Downloadable Software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor, namely, {specify goods of these types in class 9 e.g., Video game consoles}; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Downloadable electronic music files; Pre-recorded non-musical electronic media devices featuring {indicate subject matter} except for computer software; Animated cartoons, namely, {specify goods of these types in class 9 e.g., Video disks and video tapes with recorded animated cartoons}; exposed Slide film; Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; Downloadable electronic books in the field of {indicate subject matter of publication}

 

            Class 12

 

Interior decorations for vehicles, namely, {specify goods of these types in class 12 e.g., automotive exterior and interior metal decorative and protective trim}; Bodies for vehicles; Saddles for bicycle and motocycles; Apparatus for locomotion by land, air and water, namely, {Specify goods of these types in class 12 e.g., Electric locomotives} ; Vessels being boats and ships; Air vehicles, namely, {Specify goods of these types in class 12 e.g., airplanes}; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles, namely, {Specify goods of these types in class 12 e.g., Brake hardware for vehicles}; Tractors for agricultural purposes; Motive power machines for land vehicles, namely, {specify goods of these types in class 12 e.g., Engines for land vehicles}; Power transmissions for land vehicles; {specify if wheel or axle} Bearings for land vehicles; Motors for land vehicles

 

            Class 35

 

Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; public opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others, namely, {Specify services of these types in class 35 e.g., Compilation of information into computer databases}; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others, namely, {specify services of these types in class 35 e.g., business research}; Computerized file management; Auctioneering provided on the internet

 

            Class 38

 

Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services, namely, {Specify services of these types in class 38 e.g., E-mail forwarding services}; Instant messenger service; Providing internet chatrooms; Transmission of messages and images via the internet; Internet telephony services; Electronic bulletin board services being telecommunications services; Leasing access time to a computer database, namely, {specify services of these types in class 38 e.g., Providing access to databases}; electronic Transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting services

 

            Class 41

 

Production of radio and television programmes; Production of animated films; Reservation of theatre show tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; Education information, namely, {Specify services of these types in class 41 e.g., Providing information about education}; Online educational examination services; Education services in the nature of courses in the field of {specify field} through the internet; Internet educational instruction in the field of {specify field of instruction}; Computer software academies, namely, {specify services of these types in class 41 e.g., providing courses of instruction in the field of computer software}; Provision of game information, namely, {Specify services of these types in class 41 e.g., Provision of information relating to electronic computer games provided via the Internet}; Game services provided on-line, namely, {specify services of these types in class 41 e.g., providing online video games}; Booking of seats for sports competitions; On-line game service, namely, {Specify services of these types in class 41 e.g., providing online electronic games}

 

            Class 42

 

Industrial design services; Development of game software; Rental of a database server to third parties; Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer web sites; Provision of internet search engines; Provision of internet security programs, namely, {Specify services of these types in class 42 e.g., Providing temporary use of a non-downloadable web application for monitoring and controlling computer and online activity}; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

APPLICATION SIGNATURE 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.

 

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 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. 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 May 09, 2020 for

U.S. Trademark Application Serial No. 88815455

 

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. 

 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 May 09, 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.”