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:  June 15, 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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

• Classification and Identification of Goods and Services
• Multiple-Class Application Requirements
• Description Mark and Color Claim Must Be Amended
• Explanation of Mark’s Significance Required
• Foreign Registration Certificate Required

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

 

Applicant has classified “providing internet application services for communications” in International Class 38; however, the proper classification is International Class 42.  Therefore, applicant may respond by (1) adding International Class 42 to the application and reclassifying these services in the proper international class, (2) deleting “providing internet application services for communications” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. Further, the wording “providing internet application services for communications” in the identification of services is indefinite and must be clarified because the nature of the services has not been identified with adequate specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable.  See id.  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

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 following are examples of acceptable identifications in International Class 9:  “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications in International Class 41:  “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.”  Finally, the following are acceptable identifications in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”

 

The wording “computer databases” in the identification of goods is indefinite and must be clarified because the goods have not been identified with adequate specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “message sending; transmission of video and text via applications for mobile devices; providing chat services via mobile and wired communication; wireless communication services; video and audio communication and transmission services; video streaming services; providing mobile chat service via the smart phone application; video communication services; providing on-line discussion services; providing online chat service; voice communication servicechatroom services through Internet; transmission of data via the Internet; transmission of information; information transfer; transmission of contents via computers; providing internet application services for communications” in the identification of services is indefinite and must be clarified because the services have not been identified with adequate specificity.  Id. 

 

Finally, the following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions in bold and/or brackets so long as they are accurate. Applicant should note that the brackets indicate where applicant must insert specific types of goods or services. The brackets should NOT appear in the amended identification; only the specific goods or services inserted by applicant. Applicant need not amend identifications other than where specified.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: Recorded messenger program, namely, [further clarify the function or purpose of the program, e.g., software for the redirection of electronic messages to alternate addresses]; artificial intelligence application software program, downloadable for wireless terminals for [specify he function or purpose of the program, e.g., scheduling doctor’s appointments]; downloadable software for [further clarify the function or purpose of the program, e.g., database management]; downloadable smart phone application software for [further clarify the function or purpose of the program, e.g., database management]; downloadable instant messaging software; downloadable cloud computing software for [further clarify the function or purpose of the program, e.g., database management]; [specify downloadable or recorded] computer software for database [further clarify the function or purpose of the program, e.g., management]; [specify downloadable or recorded] computer software for [further clarify function of software, e.g., connecting] wireless network communications; [specify downloadable or recorded] software for [further clarify the function or purpose of the program, e.g., database management]; [specify downloadable or recorded] application software for smart phone for [further clarify the function or purpose of the program, e.g., database management]; [specify downloadable or recorded] software for online messaging; [specify downloadable or recorded] application software for [further clarify the function or purpose of the program, e.g., database management]; [specify downloadable or recorded] instant messaging software; [specify downloadable or recorded] computer software for internet chatting; computer databases in the nature of [further clarify nature of goods, e.g., computer servers]; [specify downloadable or recorded] computer software for [further clarify the function or purpose of the program, e.g., database management]; [specify downloadable or recorded] communications software for connecting computer network users; computer software platforms, [specify downloadable or recorded], for [further clarify the function or purpose of the program, e.g., database management]; [specify downloadable or recorded] communications software [further clarify function or purpose of software, e.g., to access data stored on an oximeter and transfer data to another device]; [specify downloadable or recorded] application software for smart phone for video chatting services for [further clarify function or purpose of the software, e.g., controlling the operation of video devices]

 

Class 38: Digital network telecommunications services; electronic message sending; transmission of images between mobile telecommunications devices; transmission of video and text via [further clarify Class 38 services, e.g., wires telecommunication] applications for mobile devices; providing [further clarify chat services, e.g., voice] chat services via mobile and wired communication; wireless [further clarify type of communication services, e.g., broadband] communication services; video and audio communication and transmission services, namely, [further clarify services, e.g., Transmission of audio and video tethered downloads]; video streaming services [further clarify how services are provided and their content, e.g., via the Internet, featuring independent films and movies] ; providing mobile [further clarify chat services, e.g., voice] chat service via the smart phone application; video communication services, namely, [further clarify services, e.g., Video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others]; providing on-line discussion services, namely, [further clarify Class 38 services, e.g., providing internet chat rooms]; providing online chat service, namely, [further clarify Class 38 services, e.g., providing internet chat rooms]; providing voice communication service via [further clarify how the services are provided, e.g., the Internet];  transmission of instant messages; chatroom services through the Internet; electronic transmission of data via the Internet; transmission of information via [further clarify means of transmission, e.g., digital networks]; information transfer, namely, [further clarify Class 38 services, e.g., transmission of information via digital networks]; electronic transmission of [further clarify type of content, e.g., digital media] contents via [further clarify means of transmission, e.g., global] computer networks; providing internet application services for communications

 

Class 42: Providing online, non-downloadable computer software for database [further clarify the function or purpose of the program, e.g., management]; providing online, non-downloadable computer software for [further clarify function of software, e.g., connecting] wireless network communications; providing online, non-downloadable software for [further clarify the function or purpose of the program, e.g., database management]; providing online, non-downloadable application software for smart phone for [further clarify the function or purpose of the program, e.g., database management]; providing online, non-downloadable software for online messaging; providing online, non-downloadable application software for [further clarify the function or purpose of the program, e.g., database management]; providing online, non-downloadable instant messaging software; providing online, non-downloadable computer software for internet chatting; providing online, non-downloadable computer software for [further clarify the function or purpose of the program, e.g., database management]; providing online, non-downloadable communications software for connecting computer network users; platform as a service (PAAS) featuring computer software platforms, [specify downloadable or recorded], for [further clarify the function or purpose of the program, e.g., database management]; providing online, non-downloadable communications software [further clarify function or purpose of software, e.g., to access data stored on an oximeter and transfer data to another device]; providing online, non-downloadable application software for smart phone for video chatting services for [further clarify function or purpose of the software, e.g., controlling the operation of video devices]; providing online, non-downloadable, internet-based application services for communications in the nature of [further clarify function or purpose of application, e.g., communication software for providing access to the internet]

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 1 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

DESCRIPTION OF MARK AND COLOR CLAIM MUST BE AMENDED

 

Applicant must clarify the colors that are being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in the colors dark purple, medium purple, light purple, light blue, gray, and white; however, the following colors appear in the color claim and description of the mark:  purple, blue, and white. 

 

Where the color claim and description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is.  TMEP §807.07(a)(i)-(a)(ii), (c).  Additionally, the colors in the drawing, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

To clarify the colors in the mark, applicant may satisfy one of the following:

 

(1)        Submit a new color drawing that shows the mark in the colors specified in the color claim and description.  TMEP §807.07(c).  However, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.

 

(2)        Submit an amended color claim and description that matches the colors in the drawing.  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  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:

 

Color claim:  The colors dark purple, medium purple, light purple, light blue, gray, and white are claimed as a feature of the mark.

 

Description:  The mark consists of the design of an irregular smiley face, with the body of the smiley face in dark purple, and the top right portion of the smiley face going from medium purple to light purple. The top right and bottom of the smiley face is in white with a gray outline. There is white shading on the left side of the smiley face design. Inside the smiley face design, the left eye is in light blue with white shading at the top and gray shading at the bottom. The right eye is in white with gray shading around the edge.  The mouth is in white. Behind the smiley face design is an arcing arrow in various shades of light blue. All above the stylized wording “BERMUDA” in dark purple. The additional areas of white represent background, outlining, shading, and/or transparent areas and are not part of the mark.

 

For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must provide all the following information:

 

(1)  Explain whether the wording “BERMUDA” in the mark has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether the wording “BERMUDA” in the mark identifies a geographic place. 

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

QUESTIONS

 

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 requirements 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.    

 

 

/Andrew Crowder-Schaefer/

Trademark Examining Attorney

Law Office 104

(571) 272-0087

andrew.crowderschaefer@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 June 15, 2020 for

U.S. Trademark Application Serial No. 88837614

 

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. 

 

 

/Andrew Crowder-Schaefer/

Trademark Examining Attorney

Law Office 104

(571) 272-0087

andrew.crowderschaefer@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 June 15, 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.”