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:  August 14, 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:

• Identification and Classification of Services – Class 41
• Partial Refusal Response Options

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES – CLASS 41

 

The wording “licensing of sports performance data” in the identification of services is indefinite and must be clarified because the nature of the services, such as whether they are in the nature of providing access to databases, commercial administration of the licensing of the goods and services of others, or licensing of computer software or intellectual property rights, is completely unspecified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, the wording “licensing of sports performance data” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass Class 35 services in the nature of commercial administration of the licensing of the goods and services of others, Class 38 services in the nature of providing access to databases, and Class 45 services in the nature of licensing of computer software or intellectual property rights.  Finally, the wording appears to be misclassified, and should be classified in one of the above-mentioned classes (Classes 35, 38, or 45), depending on the specific nature of applicant’s services.

 

Applicant is also advised to delete or modify the duplicate entry in the identification of services in International Class 41 for “Physical fitness assessment services for sports training purposes.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: Downloadable computer application software for mobile electronic devices, namely, software for hosting and offering live and pre-recorded physical fitness and sports coaching and training content; Downloadable computer application software for mobile electronic devices, namely, software for hosting and offering videos and articles in the field of sports; Downloadable computer application software for mobile electronic devices, namely, software for selling sports training products;

 

Class 35: Analyzing and compiling business data; Data processing services in the field of sports; online retail store services featuring sports training products; licensing of sports performance data, namely, commercial administration of the licensing of the sports performance data of others;

 

Class 41: Physical fitness training of individuals and groups; Physical fitness training services; Physical fitness assessment services for sports training purposes; Coaching in the field of sports; Sports training services in the field of baseball and football; Sports training services; Physical fitness assessment services for sports training purposes; providing a website featuring non-downloadable videos and articles in the field of sports;

 

Class 45: Software as a service (SAAS) services featuring software for hosting and offering live and pre-recorded physical fitness and sports coaching and training services; Providing a website featuring technology that enables users to watch live and pre-recorded physical fitness and sports coaching and training content; Providing a website featuring technology that enables users to access non-downloadable videos and articles in the field of sports; Providing a website featuring technology that enables users to purchase sports training products.

 

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.

 

PARTIAL REFUSAL RESPONSE OPTIONS

 

The stated refusal refers to the following services and does not bar registration for the other services: 

 

Class 35: Licensing of sports performance data; Physical fitness assessment services for sports training purposes.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the services to which the refusal pertains;

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for the services identified in the refusal, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

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 refusals and 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.    

 

 

/John S. Miranda/

Trademark Examining Attorney, Law Office 120

United States Patent & Trademark Office

571-272-4553

John.Miranda@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.