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 09, 2022

 

 

The examining attorney had approved the application after implementing several identification amendments via Examiner’s Amendment.  However, based on an internal review, the following Office Action must be issued.  The examining attorney understands that many, if not all, of the identification clauses noted below had already been accepted in recent registrations.  The examining attorney also understands that many of these clauses were presented in a chart format showing that the particular clause corresponded with particular registrations.  Despite this evidence, the USPTO has determined that the following identification clauses are not acceptable.

 

Identification

 

The requirement for an acceptable identification is continued. 

 

Some of the wording in the identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The specific clauses that are unacceptable are noted below.  Applicant may either provide amendments to these clauses or delete this wording from the identification. 

 

Class 9

 

The wording “computer operating system software, namely, computer software for operating system programs” is indefinite and overbroad and must be clarified. The software must be specified as “downloadable” and/or “recorded” in Class 9 to clarify the nature of the goods and justify the classification.  Applicant must amend the wording to specify whether the software is “downloadable” or “recorded” in Class 9, or to indicate that the applicant is providing online, non-downloadable software in Class 42, if accurate.

 

The following clauses are misclassified in part and must be reclassified for the same reason:

“Headsets, glasses and controllers for virtual reality games” in part as to “controllers for virtual reality games”

“Headsets, glasses and controllers for augmented reality games” in part as to “controllers for augmented reality games”

See TMEP §§1401.02(a), 1401.03(b). Controllers for games are classified in Class 28. See, e.g., Term IDs 028-3981, 028-4004, and others – see also the notes in Term ID 009-4356. The controllers must be classified in Class 28.

 

The  “wearable computing devices comprised primarily of software and display screens for connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality and augmented reality world experiences” must be clarified for multiple reasons. First, applicant must further specify the common commercial or generic name for the “wearable computing device,” for example, as smart watches or wearable activity trackers. See TMEP §1402.01.   In addition, the identification does not make clear whether the software component of the goods is downloadable or recorded. See TMEP §§1402.01, 1402.03; see also TMEP §1402.03(d).   For applications filed on or after January 1, 2019, identifications for goods with software as a component must indicate whether the software is “downloadable” and/or “recorded” to clarify the nature of the software and to preclude the inclusion of services.   See TMEP §1402.03(d). Applicant also may clarify that the software is “embedded” software. Please further specify the software component of the goods.

 

The “remote controls for mobile electronic devices” is indefinite and overbroad and must be clarified. See TMEP §§1402.01, 1402.03. Applicant potentially identifies goods in multiple classes, such as remote controls for cameras in Class 9 and remote controls for handheld game consoles in Class 28.  Please clarify the goods and, if necessary, reclassify the goods.

 

The “electronic sensors for monitoring physical movements” is indefinite and overbroad and must be clarified. See TMEP §§1402.01, 1402.03. Applicant potentially identifies goods in multiple classes, such as electronic motion sensors in Class 9 and medical sensors in the nature of biofeedback sensors or patient monitoring sensors in Class 10. Applicant also may clarify that the sensors are not for medical use to justify classification in Class 9.  Please clarify the goods and, if necessary, reclassify the goods.

 

The “downloadable electronic publications in the nature of articles in the field of general human interest” is indefinite and must be clarified. See TMEP §1402.03(e). The field of “general human interest” is too broad of a subject matter to give constructive notice to third parties for likelihood of confusion analysis. See id.

 

The “downloadable voiceenabled software applications for personal information management” appears to contain a typographical error. See TMEP §§1402.01(a), 707.02. Please correct “voiceenabled” to “voice enabled.”

 

The following identification clauses are indefinite in whole or in part and must be clarified for the same reason:

“electronic communication equipment and instruments, namely, mobile and wearable digital electronic devices for sending and receiving of text, data, audio, image, and video files” in part as to “electronic communication equipment and instruments, namely, … wearable digital electronic devices for sending and receiving of text, data, audio, image, and video files”

“telecommunications apparatus and instruments, namely, speakers and microphones sold as component features of computers, mobile and wearable digital electronic devices for the sending and receiving of telephone calls, text messages, electronic mail, and other digital data, and for use in providing access to the internet” in part as to “telecommunications apparatus and instruments, namely, speakers and microphones sold as component features of … wearable digital electronic devices for the sending and receiving of telephone calls, text messages, electronic mail, and other digital data, and for use in providing access to the internet”

“portable handheld wearable digital electronic devices for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files and for manipulating and reviewing display screens”

“computer hardware for data storage, namely, … wearable digital electronic devices for the storage of text, data, audio, image, and video files” in part as to “computer hardware for data storage, namely, … wearable digital electronic devices for the storage of text, data, audio, image, and video files”

See TMEP §1402.01. To be definite under U.S. ID policy, the common commercial or generic name of the wearable digital electronic devices must be specified, for example, as smart watches or wearable activity trackers. Please see, e.g., deleted Term ID 009-4706, which was deleted prior to the filing of this application:

009-4706  009  Wearable digital electronic devices comprised primarily of software for {specify function of the software, e.g., viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers, etc.} and display screens and also featuring a bracelet [excluding gaming apparatus]  D  01/01/2016  GOODS  On 01-01-2016, this 03-19-2015 entry was deleted because it is indefinite as worded. Under Nice 10-2016, "smartwatches" and "wearable activity trackers" were added to the Nice Alphabetical List in Class 9.

Please clarify or delete these goods.

 

The  “wearable computer hardware” is indefinite and must be clarified. See TMEP §1402.01. To be definite under U.S. ID policy, the common commercial or generic name of the computer hardware must be identified. Please see, by analogy, deleted Term IDs 009-4608 and 009-4609, which were deleted prior to the filing of this application:

009-4608  009  Wearable computers  D  01/01/2018  GOODS  (Public Notes) On 01-01-2018, this 07-10-2014 entry was deleted because it is too broad under U.S. policy requiring specific IDs to enable third parties to make likelihood of confusion determinations under the Trademark Act, Section 2(d). This wording is no longer acceptable. 

009-4609  009  Wearable computer peripherals  D  01/01/2018  GOODS  (Public Notes) On 01-01-2018, this 07-10-2014 entry was deleted because it is too broad under U.S. policy requiring specific IDs to enable third parties to make likelihood of confusion determinations under the Trademark Act, Section 2(d). This wording is no longer acceptable. 

Please clarify the goods.

 

Class 41

 

The following four identification clauses are indefinite due to the subject matter “general interest.”

“Publication of online journals, namely, … blogs featuring user-defined content in the fields of general interest, …”

“Entertainment services, namely, providing … online non-downloadable interactive motion pictures featuring topics of general interest, online non-downloadable interactive videos featuring topics of general interest, interactive television in the nature of a continuing general interest shows broadcast over the internet, …”

“Entertainment services, namely, providing …online non-downloadable interactive motion pictures featuring topics of general interest, online non-downloadable interactive videos featuring topics of general interest, interactive television in the nature of a continuing general interest shows …”

“Entertainment and educational services, namely, providing non-downloadable movies, television shows, webcasts, audiovisual, and multimedia works via video-on-demand services in the fields of … general interest;”

“General human interest” is a recognized term in the magazine industry and related newsletter industry that indicates that a wide range of topics may be covered that appeal to the general public. However, the term “general human interest” does not have a particular meaning in other industries (such as blogs, online nondownloadable motion pictures, videos, movies, shows, etc.) and is too broad to give constructive notice to third-parties for likelihood of confusion analysis. Please clarify the “general interest” subject matter. See TMEP §1402.01.

 

Also, the entry “Providing information, reviews, and recommendations regarding …, audiovisual, and multimedia works;” is indefinite and must be clarified. Identifications for “providing information, reviews, and recommendations” must indicate the field or subject matter in order to provide public notice and to enable the USPTO to reach informed judgments concerning likelihood of confusion under the Trademark Act. See TMEP §1402.01.  Here, the subject matter “audiovisual, and multimedia works;” is insufficient to render a meaningful Sec. 2(d) determination. See, e.g., Term ID No. 041-1539.   Please clarify the subject matter of “audiovisual, and multimedia works;” accordingly. 

 

The entry “Providing computer, electronic and online databases … in the fields of secondary, collegiate, social and community interest groups;” is indefinite and must be clarified. Identifications for providing “on-line computer databases” must indicate the field or subject matter in order to provide public notice and to enable the USPTO to reach informed judgments concerning likelihood of confusion under the Trademark Act. See TMEP §1402.01. Here, the subject matter “secondary, collegiate, social and community interest groups;” is insufficient to render a meaningful Sec. 2(d) determination. See, e.g., Term ID No. 000-3 and Public Note.  Please clarify the subject matter of “secondary, collegiate, social and community interest groups;” accordingly.  

 

Class 42

 

The “Providing a web site featuring blogs and non-downloadable publications in the nature of articles, columns, and informational guides in the fields of virtual currencies, digital and blockchain assets and market and trading trends” appears in Class 42, and this clause is misclassified.   This identification clause should be moved to Class 41.  Applicant must reclassify this clause.

 

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 that are classified in at least 8 classes; however, applicant submitted a fee(s) sufficient for only 7 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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.

 

 

 

 

 

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

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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.