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:  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
• Disclaimer Required
• Amendment of Identification of Goods and Services Required
• Foreign Registration Required

 

APPLICATION NOT PROPERLY SIGNED AND VERIFIED

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

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 must disclaim the wording “STEREO” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

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.

 

A term does not need to be merely descriptive of all the goods or services specified in an application.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012).  A disclaimer requirement “is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” See In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

 

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

 

Several entries in the identification of goods and/or services are indefinite and/or overly broad and must be clarified because they fail to identify the applicant’s goods and/or services with the requisite specificity and/or could encompass goods and/or services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03.

 

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
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
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
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
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

 

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.

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

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

• 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 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 March 05, 2021 for

U.S. Trademark Application Serial No. 90230759

 

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. 

 

 

/Kyle D. Simcox/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 122

(571) 272-7851

Kyle.Simcox@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 March 05, 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.”