To: | GOOGLE LLC (tmdocket@google.com) |
Subject: | U.S. Trademark Application Serial No. 90026344 - GT-1574-US-1 |
Sent: | September 30, 2020 06:18:29 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90026344
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Correspondence Address:
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Applicant: GOOGLE LLC
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Reference/Docket No. GT-1574-US-1
Correspondence Email Address: |
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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: September 30, 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.
NO LIKELIHOOD OF CONFUSION
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.
IDENTIFICATION OF GOODS AND SERVICES
Applicant must amend the identification of goods and services to provide an acceptable identification.
The following wording is acceptable as written:
“Downloadable software for modifying the appearance, enabling transmission, sharing, enhancing, indexing, storing, and creation of images, audio-visual and video content” in International Class 9.
“Telecommunications services, namely, electronic transmission of data, images, videos and digital messaging via global computer and communication networks; peer-to-peer sharing services, namely, electronic transmission of digital photo and video files among internet users” in International Class 38.
“Providing on-line non-downloadable software that gives users the ability to upload, download, edit, and share photos and videos; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photos and videos” in International Class 42.
The remaining wording in the identification of goods is indefinite and must be clarified because it does not clearly and adequately describe the exact goods intended. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.”
Applicant may substitute the following wording, if accurate:
“Downloadable software for modifying the appearance, enabling transmission, sharing, enhancing, indexing, storing, and creation of images, audio-visual and video content; {specify downloadable or recorded} computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information” in International Class 9.
“Telecommunications services, namely, electronic transmission of data, images, videos and digital messaging via global computer and communication networks; peer-to-peer sharing services, namely, electronic transmission of digital photo and video files among internet users” in International Class 38.
“Providing on-line non-downloadable software that gives users the ability to upload, download, edit, and share photos and videos; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photos and videos” in International Class 42.
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.
AMENDED COLOR CLAIM/DESCRIPTION
Applicant has provided the following color claim/description:
The color(s) red, yellow, green and blue is/are claimed as a feature of the mark.
The mark consists of a multi-colored pinwheel design.
That claim is unacceptable, however, because it does not indicate where the claimed colors appear in the mark.
The examiner therefore recommends the following color claim/description, which applicant may adopt, if accurate:
The color(s) red, yellow, green and blue is/are claimed as a feature of the mark.
The mark consists of a multi-colored pinwheel design formed from a red semicircle on the top, a blue semicircle on the right, a green semicircle on the bottom, and a yellow semicircle on the left.
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.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
Marcie.Milone@uspto.gov
(email for informal communications only)
RESPONSE GUIDANCE