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:  January 26, 2021

 

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.

 

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

 

Identification of Goods and Services

 

The examining attorney may require an amendment of the identification language to accurately describe the goods and services.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979). 

 

Specific wording in the identification must be clarified as indicated below.  The goods and services must be identified by their common commercial descriptions.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The unacceptable descriptions in the identification are identified by the use of bracketed explanations that immediately follow such descriptions.  If the examining attorney could deduce the nature of the goods or services from the incomplete or indefinite description, comments and suggestions on how to make the description acceptable are provided. 

 

The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark.   In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).

 

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.

 

The language identified below must be amended.

 

“Downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; downloadable computer software for use as an application programming interface (API);

 

downloadable computer software in the nature of an application programming interface (API) for downloadable computer software which facilitates online services for social networking [wording “facilitates online services for social networking” is too broad—specify this specific function of the software in greater details], and for allowing data retrieval, upload, download, access and management of photographs, images, audio-visual and video content;

 

downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, and sharing electronic media or information via computer and communication networks;

 

[specify, e.g., portable and handheld] digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files;

 

computer hardware and software for use in searching, selecting, playing, streaming, and sharing television, movies, music, podcasts, computer games, images, and other audio, video, data, and multimedia content, and for use in searching, selecting, and using computer applications;

 

remote controls for use with the all of the foregoing [wording “remote controls for use with the all of the foregoing” is indefinite—attached ID Manual entries require commercial names of those things that are controlled by the remote controls; there is nothing mentioned above that would use a remote control]” – Class 9;

 

“Providing access to computer, electronic and online databases; providing online forums for communication, namely, transmission on topics of general interest; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; broadcast communications services, namely, electronic transmission of advertisements and media advertising, and uploading, posting, displaying, tagging, and electronically transmitting data, information, images and messages, all over computer or other communication networks; telecommunications services, namely, electronic transmission of data, information, images and messages;

 

broadcasting, transmission, and streaming [wording “broadcasting, transmission, and streaming” is unclear and does not apply to all of the following, e.g., “broadcasting data” is not a service; applicant must amend the wording so that is conforms with the examples set forth in the Office’s ID Manual] of voice, data, images, audio, video, multimedia [word “multimedia” is indefinite], television [term “television” is indefinite], by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable;

 

subscription transmission services of streamed [specify, digital] music, audio, video, and multimedia content [wording “multimedia content” is indefinite and fails to identify a media format such as “audio” or “video”—may instead adopt: “digital media content”] by means of telecommunications networks” – Class 38.

 

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).

 

Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

Abandonment of Goods and Services

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Classes 9 and 38 will be deleted from the application: 

 

“which facilitates online services for social networking; digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; remote controls for use with the all of the foregoing” – Class 9;

 

“broadcasting, transmission, and streaming of voice, data, images, audio, video, multimedia, television, by means of telecommunications networks, computer networks, the Internet, satellite, wireless communications networks, television, and cable; music, multimedia content” – Class 38.

 

The application will then proceed with the following services in International Classes 9 and 38 only: 

 

“Downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; downloadable computer software for use as an application programming interface (API); downloadable computer software in the nature of an application programming interface (API) for downloadable computer software for allowing data retrieval, upload, download, access and management of photographs, images, audio-visual and video content; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, and sharing electronic media or information via computer and communication networks; computer hardware and software for use in searching, selecting, playing, streaming, and sharing television, movies, music, podcasts, computer games, images, and other audio, video, data, and multimedia content, and for use in searching, selecting, and using computer applications” – Class 9;

 

“Providing access to computer, electronic and online databases; providing online forums for communication, namely, transmission on topics of general interest; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; broadcast communications services, namely, electronic transmission of advertisements and media advertising, and uploading, posting, displaying, tagging, and electronically transmitting data, information, images and messages, all over computer or other communication networks; telecommunications services, namely, electronic transmission of data, information, images and messages; subscription transmission services of streamed audio and by means of telecommunications networks” – Class 38.

 

 

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

 

 

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

 

 

/Christopher Buongiorno/

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

christopher.buongiorno@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 January 26, 2021 for

U.S. Trademark Application Serial No. 90175134

 

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. 

 

 

/Christopher Buongiorno/

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

christopher.buongiorno@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 January 26, 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.”