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:  July 13, 2021

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on October 10, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirements: amendment to the identification required.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated October 10, 2020, applicant was required to satisfy the following requirement(s):  certificate of foreign registration required, amendment to the identification required, satisfy multiple-class application requirements (if necessary).

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: certificate of foreign registration provided.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•         NEW ISSUE: Amendment to the Identification Required

•         Multiple-Class Application Requirements (continued and modified)

 

Applicant must respond to all issues raised in this Office action and the previous October 10, 2020 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

AMENDMENT TO THE IDENTIFICATION REQUIRED

 

The identification for “software” in International Class 009 is too broad and must be clarified to specify 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; except for non-downloadable game software provided online or for temporary use, which is 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 identification for “electronic publications” in International Class 009 is indefinite and must be clarified because the wording does not make clear the nature of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x). Applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines. See TMEP §1402.03(e).

 

In addition, particular wording in the proposed amendment to the identification in the U.S. application is not acceptable because it exceeds the scope of the identification in the foreign registration.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  The scope of the identification for purposes of permissible amendments may not exceed the scope of the services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).  Therefore, the original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

The proposed amendment to the U.S. application identifies the services outside the scope of the foreign registration as provided below. 

 

Applicant may adopt the following wording, if accurate:

 

Class 009:       Software, namely, downloadable interactive software, downloadable software, downloadable computer software, downloadable application software, downloadable software for electronic tablets, downloadable software and applications for mobile devices, downloadable software applications, downloadable computer software applications, downloadable software applications for mobile devices, downloadable mobile applications for portable computing devices, all the aforementioned software used for photo and video editing; Downloadable mobile applications for data management; Downloadable mobile applications for data transmission; Downloadable mobile applications for transmitting information; Downloadable mobile applications for information management; Downloadable computer software for use as an application programming interface (API); Downloadable software for transmitting information; Downloadable software for data management; Downloadable software and applications for sending and receiving electronic messages, graphics, images, audio and audiovisual content via the Internet and communication networks; Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., magazines, books} downloadable mobile applications in the field of photo and video editing; Downloadable photo design software and applications; downloadable computer application software for transmitting and sending photos and videos; Downloadable computer application software for editing photographs; Downloadable computer application software for video design; Downloadable computer application software for photo and video editing; Downloadable computer application software for modifying the appearance of photos; Downloadable computer application software for collecting, editing, organizing, modifying, transmitting, storing and sharing data, photos, music, videos and information; Downloadable computer software for transforming, editing and downloading multimedia content, in particular videos, sound data and images; Downloadable photo recordings in the nature of creative tutorials in the field of social media advertising; Filters for use in photography, namely, for photo and video editing in connection with mobile applications

 

Class 038:       Telecommunications in the nature of telecommunication consultation; Electronic data transmission; Electronic transmission of messages; Electronic image transmission services; Electronic document transmission services; Electronic transmission of images, photos, illustrations and graphic images over a global computer network; Audio, text and video broadcasting service on the Internet or other communication networks; Transmission of messages; Providing user access to global computer networks; Rental of access time to global computer networks; Electronic transmission of digital files; Providing online chat room services for social networking; Providing access to online computer databases; Instant electronic messaging services [NOTE: the foreign registration is limited to “Instant electronic messaging services”; removing this limitation impermissibly expands the scope of the identification]; Photo sharing, video sharing and data sharing services, namely, electronic transmission of digital photo, audio, video, audiovisual and graphic content files between users; Photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audiovisual content and data between Internet users and mobile devices             

 

Class 041:       Entertainment services in the nature of live photo and video editing performances; Production and editing [NOTE: the foreign registration does not include “editing”; removing this limitation impermissibly expands the scope of the identification] of photo and video in the nature of multimedia content, animations, video sequences, photos on mobile electronic devices; Providing entertainment information via the Internet; Providing information in the field of entertainment; Entertainment information; Photography services; Recording studio services; Movie studio services; Photo studio services in the nature of photography services; Photographic composition for third parties; Provision of non-downloadable online electronic publications in the nature of magazines and newsletters in the field of photo and video editing

 

Class 042:       Computer services, namely, interactive hosting services allowing users to publish and share their own content and images online; Provision, for temporary use, of online non-downloadable software and computer application software for creation, visualization, editing [NOTE: the foreign registration does not include “editing”; removing this limitation impermissibly expands the scope of the identification], management, indexing, sorting, organization, storage, transfer, printing, and the exchange of digital photographs, graphic and digital images, data, texts, audio sequences, video sequences, documents and multimedia and interactive works; Design and development of software in the field of mobile applications

 

Class 045:       Online social networking services; Online social networking services accessible through downloadable mobile applications; Licensing authority services, namely, licensing of photo and video editing [NOTE: the foreign registration is limited to “Licensing authority services”; removing this limitation impermissibly expands the scope of the identification]; Providing information in the form of databases containing information in the field of online social networking services

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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 (CONTINUED AND MODIFIED)

 

To the extent the amendment to the identification include an additional class(es) 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 fee(s) already paid (view the USPTO’s current fee schedule).  To the extent the amendment to the identification include an additional class(es), 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).

 

Fee(s) for Additional Class(es)

 

The fee for adding classes to a TEAS Standard application is $350 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

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.

 

RESPONSE TO OFFICE ACTION

 

Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) Applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office Action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about Applicant’s rights. See TMEP §§705.02, 709.06.

 

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

 

 

/Jami E. Holland/

Jami E. Holland

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 122

(571) 272-7806

Jami.Holland@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 July 13, 2021 for

U.S. Trademark Application Serial No. 90021671

 

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. 

 

 

Holland, Jami

 

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 July 13, 2021, 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.”