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 23, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search of the USPTO Database

 

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:

 

• Identification of Goods and Services
• Multiple Class Application Requirements

 

Identification of Goods and Services

 

The identification of services is indefinite and must be clarified for the reasons in the table below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Radio broadcasting services
television broadcasting services
webcasting services
streaming of audio, visual, and data information via a global computer network, mobile applications, or other electronic or digital communications network or digital communications device	·         Clarify wording
communication services, namely, transmitting streamed sound and audio visual recordings via the internet
Computer aided transmission of messages and images
Electronic bulletin board services
Electronic mail	·         Specify providing transmission services
Message sending	·         Specify electronic
Providing access to databases
Providing online forums	·         specify field or subject of forum
Providing user access to global computer networks
Radio broadcasting
transmission of video films	·         Specify method of transmission
broadcasting and transmission of television programmes and films to personal computers	·         Specify you are also providing “delivery” of the content ·         Specify television transmission services
broadcasting and communications by means of or aided by computer	·         Specify what you are broadcasting ·         Specify computer terminals
transmission of audio, video and/or audio visual programming by Internet protocol (IPTV)	·         Delete and/or, replace with and
transmission of text, messages, sound and/or pictures	·         Specify nature of text ·         Delete and/or, replace with and
telecommunication and/or communication and/or broadcast and/or transmission of audio visual content	·         Delete and/or ·         Specify nature of services
provision of access to electronic discussion groups and chat rooms	·         Specify nature of what you are providing access to
provision of chat rooms	·         Specify you are providing access ·         Specify nature of what you are providing access to
telecommunication of information (including web pages)	·         Specify telecommunication services and the nature of those services ·         Specify webpages are on the Internet ·         Delete parenthesis
video on demand and near on demand telecommunication and/or communication and/or broadcast and/or transmission services	·         Clarify wording ·         Delete and/or
streaming delivery of video on demand streams to viewers	·         Specify you are providing transmission
providing access to videos and television program to viewers on demand and near on demand	·         Specify you are providing access to electronic sites
audio visual communication services	·         Specify nature of services and medium through which they are provided
data communication services	·         Specify nature of services and medium through which they are provided
delivery of messages	·         Indefinite and overbroad, could include “delivery of message by courier” in Class 39 ·         Specify by electronic transmission
telecommunication and/or communication and/or broadcast and/or transmission of radio programs, television programs, films and motion pictures	·         Clarify wording ·         Delete and/or ·         Specify medium through which transmission takes place
telecommunication and/or communication and/or broadcast and/or transmission of audio and/or visual material and material from pre-recorded video media	·         Clarify wording ·         Delete and/or ·         Specify medium through which transmission takes place
transmission of radio programs, television programs, films, motion pictures, pre-recorded audio and/or visual material, pre-recorded DVDs	·         Delete “and/or” ·         Specify material
message sending	·         Delete, duplicate
online telecommunications services relating to webcasting and podcasting including services provided over a global communications network	·         delete “including” as it’s a catchall term ·         wording “relating to” is indefinite
peer to peer services	·         Indefinite and overboard, could include “peer to peer coaching services” in Class 41 ·         Specify nature of services
online dictionaries, encyclopaedias, and reference texts	·         Misclassified, move to Class 41 ·         Indefinite, specify you are providing the services and that they are non-downloadable ·         Misspelling indefinite
online publications, including magazines (periodicals), journals (publications), books, user manuals, instructional and teaching materials	·         Misclassified, move to Class 41 ·         Indefinite, specify subject matter ·         Delete parenthesis ·         “Including” a catch all term
online posters, photographs, pictures, and articles	·         Indefinite and overbroad; applicant must specify the nature of the goods and/or services and how they are made available to consumers. ·         Specify subject matter of articles in Class 41

 

Applicant must clarify the wording “delivery of messages” in the identification of services in International Class 38 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the method by which the messages are delivered.  Further, this wording could identify services in more than one international class.  For example, “delivery of messages by electronic transmission” is in International Class 38, while “delivery of messages by courier” is in International Class 39.

 

Applicant must clarify the wording “Peer to peer services” in the identification of services in International Class 38 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods services are.  Further, this wording could identify services in more than one international class.  For example, “Peer-to-peer network computer services, namely, electronic transmission of audio, video and other data and documents among computers” are in International Class 38, while “Peer to peer coaching services in the field of health and wellness” are in International Class 41.

 

Applicant has classified “online dictionaries, encyclopaedias, and reference texts” and “online publications, including magazines (periodicals), journals (publications), books, user manuals, instructional and teaching materials” in International Class 38; however, the proper classification is International Class 41.  Therefore, applicant may respond by (1) adding International Class 41 to the application and reclassifying these services in the proper international class, (2) deleting “online dictionaries, encyclopaedias, and reference texts” 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.

 

Applicant must clarify the wording “online posters, photographs, pictures, and articles” in the identification of services in International Class 38 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are or how they are accessed or provided.  Further, this wording could identify services in more than one international class.  For example, “Electronic delivery of posters, photographs, pictures, and articles online via a global computer network” are in International Class 38, and “Providing a website online featuring non-downloadable posters, photographs, pictures, and articles in the field of  religion and genealogy” are in International Class 41.

 

The identification of goods and/or 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/or services.

 

Finally, Applicant has included the term “and/or” or “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the use of “and/or” does not make it clear whether applicant is offering telecommunication, communication, broadcasting, or transmission services, or all of those services.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

The following identification of goods and services is suggested, if accurate (changes are in bold, deletions have been struck through and applicant is asked to specify in the {brackets}):

 

International Class 14

*no changes from application

 

International Class 38

Radio broadcasting services; television broadcasting services; webcasting services; streaming of audio, visual, and data information via a global computer network available via mobile applications and other digital communications device; communication services, namely, transmitting streamed sound and audio visual recordings via the internet; Computer aided transmission of messages and images; Electronic bulletin board services; Transmission of electronic mail; Electronic message sending; Providing access to databases; Providing online forums for {specify field or subject matter of forum}; Providing user access to global computer networks; Radio broadcasting; transmission of video films via the Internet; broadcasting and transmission services of television programmes and films to personal computers; broadcasting programs and communications by means of or aided by computer terminals; transmission of audio, video and audio visual programming by Internet protocol (IPTV); transmission of text messages, messages, sound and pictures; telecommunication, communication, and broadcast services, namely,  transmission of audio visual content via the Internet; provision of access to electronic sites featuring discussion groups and chat rooms; provision of access to electronic sites featuring chat rooms; telecommunication services, namely, providing access to  of information on Internet web pages; telecommunication, communication, and broadcasting services, namely, video on demand and near on demand transmission services; Video streaming services via the internet, namely, streaming delivery of video on demand to viewers; providing access to electronic sites featuring videos and television programs to viewers on demand and near on demand; audio visual communication services, namely, transmitting streamed sound and audiovisual recordings via the internet; data communication services, namely, transmission of data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; delivery of messages by electronic transmissioin; telecommunication, communication, and broadcast services, namely, transmission of radio programs, television programs, films and motion pictures via {specify the medium through which programs are provided (e.g., the Internet, satellite, etc.)}; telecommunication, communication, and broadcast services, namely, transmission of audio and visual material, namely, specify nature of material (e.g., television programs ) and material from pre-recorded video media, namely, {specify nature of material (e.g., television programs) via {specify medium of transmission}; transmission of radio programs, television programs, films, motion pictures, pre-recorded audiovisual material in the nature of {specify nature of material (e.g., movies, music, etc.), and pre-recorded DVDs via {specify medium of transmission}; message sending; online telecommunications services, namely webcasting and podcasting services provided over a global communications network; peer to peer network computer services, namely, namely, electronic transmission of audio, video and other data and documents among computers; online dictionaries, encyclopaedias, and reference texts; online publications, including magazines (periodicals), journals (publications), books, user manuals, instructional and teaching materials; Electronic delivery of posters, photographs, pictures, and articles online via a global computer network

 

International Class 39

Delivery of messages by courier

 

International Class 41

Providing online non-downloadable dictionaries, encyclopedias, and reference texts; Providing online publications in the nature of magazines, journals, books, user manuals, and instructional and teaching materials in the field of {specify the subject matter of the publications (e.g., religion, science, etc.)}; Providing a website online featuring non-downloadable posters, photographs, pictures, and articles in the field of {specify subject matter (e.g., religion, genealogy, etc.)}

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only two (2) class.  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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

 

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

 

 

/Joseph Greene/

Joe Greene

Trademark Examining Attorney

USPTO, Law Office 125

(571)272-5763

joseph.greene@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 23, 2020 for

U.S. Trademark Application Serial No. 88856638

 

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. 

 

 

/Joseph Greene/

Joe Greene

Trademark Examining Attorney

USPTO, Law Office 125

(571)272-5763

joseph.greene@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 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.”