To: | Stereo App Limited (chiusptomail@bakermckenzie.com) |
Subject: | U.S. Trademark Application Serial No. 90230759 - STEREO - 200461 |
Sent: | March 05, 2021 04:49:37 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90230759
Mark: STEREO
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Correspondence Address: |
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Applicant: Stereo App Limited
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Reference/Docket No. 200461
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: March 05, 2021
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.
SEARCH OF OFFICE’S 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:
APPLICATION NOT PROPERLY SIGNED AND VERIFIED
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.
DISCLAIMER REQUIRED
Applicant’s goods and services generally pertain to the streaming, downloading, and accessing of digital media, such as music. The attached evidence from the American Heritage Dictionary shows that a stereo is a stereophonic sound-reproduction system, while additional evidence from CNet, Bluesound, the PE Specialist, and Budget Home Theater shows that stereos are commonly used for streaming and playing digital media such as must. Thus, the wording merely describes applicant’s goods and/or services because it immediately communicates to consumers that applicant’s goods and services can be used to stream, access, and play digital media on stereo systems.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “STEREO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The chart below sets forth the specific issues with each identification, as well as suggestions for correcting those issues:
International Class 9
IDENTIFICATION |
ISSUE(S) |
SUGGESTED AMENDMENT |
Computer application software for streaming media content via the internet; |
Indefinite and overly broad; must clarify as downloadable or recorded in Class 9 or online and nondownloadable in Class 42 |
downloadable computer application software for streaming media content via the internet; |
software for social networking; |
Indefinite and overly broad; must clarify as downloadable or recorded in Class 9 or online and nondownloadable in Class 42 |
downloadable software for social networking; |
computer software platforms for social networking; |
Indefinite and overly broad; must clarify as downloadable or recorded in Class 9 or online and nondownloadable in Class 42 |
downloadable computer software platforms for social networking; |
computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing; |
Indefinite and overly broad; must clarify as downloadable or recorded in Class 9 or online and nondownloadable in Class 42 |
downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing; |
downloadable software in the nature of a mobile application for social networking; |
Acceptable |
downloadable software in the nature of a mobile application for social networking; |
application software for social networking services via internet; |
Indefinite and overly broad; must clarify as downloadable or recorded in Class 9 or online and nondownloadable in Class 42 |
downloadable application software for social networking services via internet; |
cell phone straps; |
Acceptable |
cell phone straps; |
selfie sticks; |
Acceptable |
selfie sticks; |
headphones; |
Acceptable |
headphones; |
wireless headphones; |
Acceptable |
wireless headphones; |
earphones; |
Acceptable |
earphones; |
sunglasses; |
Acceptable |
sunglasses; |
magnets; |
Acceptable |
magnets; |
magnets (Decorative); |
Indefinite; must remove parentheses |
decorative magnets; |
mouse pads; |
Acceptable |
mouse pads; |
wrist rests for use with computers |
Acceptable |
wrist rests for use with computers |
International Class 35
IDENTIFICATION |
ISSUE(S) |
SUGGESTED AMENDMENT |
Advertising, marketing and promotional services through a social networking platform; |
Acceptable |
Advertising, marketing and promotional services through a social networking platform; |
artist management; |
Indefinite; must clarify as business management for artists |
business management of artists; |
management of sports people; |
Indefinite; must clarify as business management |
business management of sports people; |
market research; |
Acceptable |
market research; |
marketing studies; |
Acceptable |
marketing studies; |
modelling for advertising or sales promotion; |
Acceptable |
modelling for advertising or sales promotion; |
news clipping services; |
Acceptable |
news clipping services; |
presentation of goods on communication media, for retail purposes; |
Indefinite; wording no longer acceptable, must amend to “Providing television home shopping services in the field of general consumer merchandise” |
providing television home shopping services in the field of general consumer merchandise; |
rental of advertising space; |
Acceptable |
rental of advertising space; |
rental of advertising time on communication media; |
Acceptable |
rental of advertising time on communication media; |
sponsorship search; |
Acceptable |
sponsorship search; |
business networking through a social networking platform; |
Indefinite; must clarify as being business networking services so as to distinguish from software goods or services |
business networking services provided through a social networking platform; |
online business services for connecting social network users with businesses; |
Acceptable |
online business services for connecting social network users with businesses; |
providing online music subscription services |
Acceptable |
providing online music subscription services |
International Class 38
IDENTIFICATION |
ISSUE(S) |
SUGGESTED AMENDMENT |
Electronic transmission of data, messages, graphics, images and information; |
Acceptable |
Electronic transmission of data, messages, graphics, images and information; |
peer-to-peer electronic transmission of digital files among internet users; |
Acceptable |
peer-to-peer electronic transmission of digital files among internet users; |
instant messaging services in connection with social networking; |
Acceptable |
instant messaging services in connection with social networking; |
application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; |
Misclassified; must be reclassified to Class 42 |
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providing access to a video sharing portal; |
Indefinite; must clarify as providing internet access |
providing internet access to a video sharing portal; |
providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of digital content; |
Misclassified; must be reclassified to Class 42 |
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streaming of electronic material via a global computer network; |
Acceptable |
streaming of electronic material via a global computer network; |
providing on-line chat rooms for social networking; |
Acceptable |
providing on-line chat rooms for social networking; |
providing online computer databases in the fields of social networking; |
Misclassified; must be reclassified to Class 45 |
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information, advisory and consultancy services relating to all the aforesaid |
Acceptable |
information, advisory and consultancy services relating to all the aforesaid |
International Class 42
IDENTIFICATION |
ISSUE(S) |
SUGGESTED AMENDMENT |
Platform as a service (PaaS) featuring computer software platform for uploading, streaming and gathering analytics; |
Acceptable |
Platform as a service (PaaS) featuring computer software platform for uploading, streaming and gathering analytics; |
platform as a service (PaaS) featuring software platforms for transmission of digital content and messages; |
Acceptable |
platform as a service (PaaS) featuring software platforms for transmission of digital content and messages; |
software as a service (SaaS) for social networking; |
Indefinite; must clarify as software as a service featuring software |
software as a service (SaaS) services featuring software for social networking; |
providing a platform to allow users to stream files via website and mobile application; |
Indefinite and overly broad; must clarify as either recorded or downloadable software platforms in Class 9 or online, nondownloadable software platform in Class 42 |
providing an online, nondownloadable software platform to allow users to stream files via website and mobile application; |
application service provider featuring application programming interface (API) software for uploading, sharing, managing, and streaming digital files; |
Acceptable |
application service provider featuring application programming interface (API) software for uploading, sharing, managing, and streaming digital files; |
research in the field of social media; |
Misclassified; must reclassify to Class 45 |
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information, advisory and consultancy services relating to all the aforesaid |
Acceptable |
information, advisory and consultancy services relating to all the aforesaid |
International Class 45
IDENTIFICATION |
ISSUE(S) |
SUGGESTED AMENDMENT |
Internet based social introduction and networking; |
Acceptable |
Internet based social introduction and networking; |
online social networking services accessible by means of downloadable mobile applications; |
Acceptable |
online social networking services accessible by means of downloadable mobile applications; |
licensing of technology and software; |
Acceptable |
licensing of technology and software; |
information, advisory and consultancy services relating to all the aforesaid |
Acceptable |
information, advisory and consultancy services relating to all the aforesaid |
Applicant may adopt the following identification of goods/services, if accurate:
International Class 9: downloadable computer application software for streaming media content via the internet; downloadable software for social networking; downloadable computer software platforms for social networking; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing; downloadable software in the nature of a mobile application for social networking; downloadable application software for social networking services via internet; cell phone straps; selfie sticks; headphones; wireless headphones; earphones; sunglasses; magnets; decorative magnets; mouse pads; wrist rests for use with computers
International Class 35: Advertising, marketing and promotional services through a social networking platform; business management of artists; business management of sports people; market research; marketing studies; modelling for advertising or sales promotion; news clipping services; providing television home shopping services in the field of general consumer merchandise; rental of advertising space; rental of advertising time on communication media; sponsorship search; business networking services provided through a social networking platform; online business services for connecting social network users with businesses; providing online music subscription services
International Class 38: Electronic transmission of data, messages, graphics, images and information; peer-to-peer electronic transmission of digital files among internet users; instant messaging services in connection with social networking; providing internet access to a video sharing portal; streaming of electronic material via a global computer network; providing on-line chat rooms for social networking; information, advisory and consultancy services relating to all the aforesaid
International Class 42: Platform as a service (PaaS) featuring computer software platform for uploading, streaming and gathering analytics; platform as a service (PaaS) featuring software platforms for transmission of digital content and messages; software as a service (SaaS) services featuring software for social networking; providing an online, nondownloadable software platform to allow users to stream files via website and mobile application; application service provider featuring application programming interface (API) software for uploading, sharing, managing, and streaming digital files; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of digital content; information, advisory and consultancy services relating to all the aforesaid
International Class 45: Internet based social introduction and networking; online social networking services accessible by means of downloadable mobile applications; licensing of technology and software; providing online computer databases in the fields of social networking; research in the field of social media; information, advisory and consultancy services relating to all the aforesaid
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.
FOREIGN REGISTRATION REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/Kyle D. Simcox/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7851
Kyle.Simcox@USPTO.gov
RESPONSE GUIDANCE