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 23, 2020

 

 INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 27, 2020

 

In a previous Office action dated May 9, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement(s):  Identification of goods – Amendment required and application signature was required.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: application signature has been provided.  See TMEP §§713.02, 714.04. 

 

In addition, the following refusal has been withdrawn:  Trademark Act Section 2(d) for a likelihood of confusion with the mark in U.S. Registration No. 4508816.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

In the May 9, 2020 Office action, applicant was previously required to provide an acceptable identification of services. In applicant’s October 27, 2020 Office action response, applicant amended the identification of services, however addititional entries still require specification. Therefore, the requirement to provide an acceptable identification of goods and services is hereby maintained and made FINAL

 

The wording “Recorded computer programs, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer programs, downloadable for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer software, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content” in the identification of goods is indefinite and must be clarified because this wording is unclear as to the specific nature of software being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “online search engines” and “AI platforms” is unclear as to the specific function of the software. In addition the wording “online search engines” is unclear because online search engines are classified in class 42 whereas downloadable computer search engine software is classified in class 9. Therefore, this wording needs to be clarified.

 

Applicant may substitute the following wording, if accurate:

 

            Class 7

 

            Sorting machines for industry, namely, for sorting machine parts; 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, fuel pumps for service stations; Electric lawn          mowers; Electric door opening and closing apparatus, namely, electric door opening and closing system; Cargo handling           machines; Civil engineering machinery, namely, 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, electric washing machines for industrial purposes; Machines for plastics working; Industrial robots

 

            Class 9

 

            Computer programs for pre-recorded games; Recorded computer programs, recorded for creating advertisements, performing     internet searches and displaying the search results, functioning as a search engine, mobile messaging, online advertising,             content creation, using artificial intelligence for ​​{specify the function of the programs, e.g., use in software development,        machine learning, facial and speech recognition, etc. and, if program is content- or field-specific, the content or field of            use}​, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content;    Computer programs, downloadable for creating advertisements, performing internet searches and displaying the search results,             functioning as a search engine, mobile messaging, online advertising, content creation, using artificial intelligence for ​​     {specify the function of the programs, e.g., use in software development, machine learning, facial and speech recognition,             etc. and, if program is content- or field-specific, the content or field of use}​, viewing cartoons, speech        recognition,     language translation, web browsing, navigation, and sharing content; Computer mouse being computer peripherals;             Mouse pads; Downloadable and recorded computer software for wireless content delivery; Downloadable and recorded computer       programmes for document management; Video game cartridges; Downloadable and recorded software for processing images,      graphics and text; Downloadable and recorded computer programs for editing images, sound and video; Downloadable and recorded 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 for creating advertisements, performing internet searches and displaying the search results, functioning as a search         engine, mobile messaging, online advertising, content creation, using artificial intelligence for ​​{specify the function of the programs, e.g.,             use in software development, machine learning, facial and speech recognition, etc. and, if program     is content- or field-   specific, the content or field of use}​, viewing cartoons, speech recognition, language translation, web             browsing, navigation, and sharing content; Downloadable electronic music files; Pre-recorded non-musical electronic media   devices featuring translations, pronunciations and information to aid in translation services, except for computer software;         Animated cartoons, namely, downloadable electronic cartoons, downloadable cartoon videos and video disks and video tapes         with     recorded animated cartoons; Exposed slide film; Downloadable electronic publications in the nature of magazines and         newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search             engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation,   web browsing, navigation, and sharing content; Downloadable electronic books in the field of creating advertisements,             performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising,         content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content

           

            Class 12

 

            Interior decorations for vehicles, namely, automotive exterior and interior metal decorative and protective trim; Bodies for     vehicles; Saddles for bicycle and motorcycles; Apparatus for locomotion by land, air and water, namely locomotives; Vessels            being boats and ships; Air vehicles, namely, airplanes; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts;          Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles, namely, brake hardware for vehicles;          Tractors for agricultural purposes; Motive power machines for land vehicles, namely, engines for land vehicles; Power   transmissions for land vehicles; Wheel and 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, 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, 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, electronic transmission of e-mail and 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; Leasing access time to a computer database, namely, 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 magazines and newsletters in the field of creating advertisements, performing internet searches      and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Education information,      namely, providing information about education; Online educational examination services; Education services in the nature of          courses in the field of internet use, computer software, and online advertising, offered through the internet; Internet educational    instruction in the field of internet use, computer software, and online advertising; Computer software academies, namely,    providing courses of instruction in the field of computer software; Provision of game information, namely, provision of        information relating to electronic computer games provided via the Internet; Game services provided on-line, namely, providing           online video games; Booking of seats for sports competitions; On-line game service, namely, 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, providing temporary      use of non-downloadable web application for monitoring and controlling computer and online activity; Provision of internet            security programs, namely, 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;             Computer software development; Updating of computer software; Meteorological information 

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

RESPONSE GUIDELINES

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final requirement applies will be deleted from the application by Examiner’s Amendment:

 

            Class 9

 

            Recorded computer programs, recorded for creating advertisements, performing internet searches and displaying the search    results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech             recognition, language translation, web browsing, navigation, and sharing content; Computer programs, downloadable for creating      advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online       advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation,           and sharing content; Computer software, recorded for creating advertisements, performing internet searches and displaying the    search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons,          speech recognition, language translation, web browsing, navigation, and sharing content

 

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

 

In such case, the application will proceed for the following goods and services only: 

 

            Class 7

 

            Sorting machines for industry, namely, for sorting machine parts; 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, fuel pumps for service stations; Electric lawn          mowers; Electric door opening and closing apparatus, namely, electric door opening and closing system; Cargo handling           machines; Civil engineering machinery, namely, 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, electric washing machines for industrial purposes; Machines for plastics working; Industrial robots

 

            Class 9

 

            Computer programs for pre-recorded games; Computer mouse being computer peripherals; Mouse pads; Downloadable       and recorded computer software for wireless content delivery; Downloadable and recorded computer     programmes for             document management; Video game cartridges; Downloadable and recorded software for processing images,         graphics and    text; Downloadable and recorded computer programs for editing images, sound and video; Downloadable and             recorded          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; Downloadable electronic        music files; Pre-recorded non-musical electronic media devices featuring translations, pronunciations and information to aid           in translation services, except for computer software; Animated cartoons, namely, downloadable electronic cartoons,     downloadable cartoon videos and video disks and video tapes with     recorded animated cartoons; Exposed slide film;      Downloadable electronic publications in the nature of magazines and newsletters in the field of creating advertisements,           performing internet searches and displaying the search results, online search   engines, mobile messaging, online     advertising, content creation, AI platforms, cartoons, speech recognition, language translation,         web browsing, navigation, and           sharing content; Downloadable electronic books in the field of creating advertisements,         performing internet searches and       displaying the search results, online search engines, mobile messaging, online advertising,             content creation, AI platforms,           cartoons, speech recognition, language translation, web browsing, navigation, and sharing content

           

            Class 12

 

            Interior decorations for vehicles, namely, automotive exterior and interior metal decorative and protective trim; Bodies for     vehicles; Saddles for bicycle and motorcycles; Apparatus for locomotion by land, air and water, namely locomotives; Vessels            being boats and ships; Air vehicles, namely, airplanes; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts;          Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles, namely, brake hardware for vehicles;          Tractors for agricultural purposes; Motive power machines for land vehicles, namely, engines for land vehicles; Power   transmissions for land vehicles; Wheel and 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, 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, 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, electronic transmission of e-mail and 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; Leasing access time to a computer database, namely, 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 magazines and newsletters in the field of creating advertisements, performing internet searches      and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Education information,      namely, providing information about education; Online educational examination services; Education services in the nature of          courses in the field of internet use, computer software, and online advertising, offered through the internet; Internet educational    instruction in the field of internet use, computer software, and online advertising; Computer software academies, namely,    providing courses of instruction in the field of computer software; Provision of game information, namely, provision of        information relating to electronic computer games provided via the Internet; Game services provided on-line, namely, providing           online video games; Booking of seats for sports competitions; On-line game service, namely, 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, providing temporary      use of non-downloadable web application for monitoring and controlling computer and online activity; Provision of internet            security programs, namely, 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;             Computer software development; Updating of computer software; Meteorological information 

 

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

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).

 

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 November 23, 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 November 23, 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.”