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:  February 17, 2021

 

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

 

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:

• Disclaimer Required
• Identification of Services Must Be Clarified
• Multiple Class Application Requirements

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “WEATHER” 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). 

 

The wording “WEATHER” in the mark is merely descriptive of the services in the identification because, as the identification states, the services feature information about weather.  Therefore, the wording “WEATHER” in the mark merely describes a feature of the services and must be disclaimed. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “WEATHER” 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. 

 

IDENTIFICATION OF SERVICES MUST BE CLARIFIED

 

The wording “Entertainment services, namely, provision of on-going multimedia programs in the field of weather, current event news, entertainment, business, finance, and sports distributed via various platforms across multiple forms of transmission media” in the identification of services is indefinite and must be clarified because it does not make clear the subject matter of the ongoing multimedia programs.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: Entertainment services, namely, provision of on-going multimedia programs featuring information about weather, current event news, ____________ {specify the “entertainment”, e.g. “music”}, business, finance, and sports distributed via various platforms across multiple forms of transmission media.

 

The wording “providing on-line entertainment information in the field of weather, current event news, entertainment, business, finance, and sports” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, the provision of information is classified according to the subject matter of the information.  Therefore, the provision of information in the field of weather is classified in Class 42; the provision of information in the field of current event news is classified in Class 41; the provision of information in the field of entertainment is classified in Class 41; the provision of information in the field of business is classified in Class 35; the provision of information in the field of finance is classified in Class 36; the provision of information in the field of sports is classified in Class 41.  Additionally, “providing on-line entertainment information in the field of…entertainment” is indefinite and must be clarified because the exact subject matter of the entertainment information is unclear.  Applicant should review the trademark examining attorney’s suggestions for amending this item, below.  Note, if applicant adds a class to the application, applicant must satisfy the multiple class application requirements set out below. 

 

The wording “entertainment services in the nature of non-downloadable videos and images featuring multimedia programs about weather, current event news, entertainment, business, finance, and sports transmitted via the Internet and wireless communication networks” in the identification of services is indefinite and must be clarified because the exact nature of the services and their subject matter is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  providing non-downloadable videos featuring and image files containing ongoing multimedia programs about weather, current event news, _________ {specify what is meant by “entertainment”, e.g., “music”}, business, finance, and sports transmitted via the Internet and wireless communication networks.

 

 

 

Applicant may adopt the following full identification, if accurate (changes are shown in bold, deletions are indicated by strikethrough, and the trademark examining attorney’s comments are in brackets):

 

International Class 35:  providing on-line information in the field of business;

International Class 36: providing on-line information in the field of finance;

 

International Class 41: Entertainment services, namely, provision of on-going multimedia programs featuring information about weather, current event news, ____________ {specify the “entertainment”, e.g. “music”}, business, finance, and sports distributed via various platforms across multiple forms of transmission media; providing on-line entertainment information in the fields of weather, current event news, ____________ {specify what is meant by “entertainment”, e.g., “music”}, business, finance, and sports; providing non-downloadable videos featuring and image files containing ongoing multimedia programs about weather, current event news, _________ {specify what is meant by “entertainment”, e.g., “music”}, business, finance, and sports transmitted via the Internet and wireless communication networks.

 

International Class 42: providing on-line entertainment information in the field of weather.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted.  See 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 in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

 

 

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.

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by a U.S.-licensed attorney authorized to practice before the USPTO, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  In all cases, the signer must be identified by first and last name and title or position.  37 C.F.R. §2.193(d).

 

 

 

 

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

 

 

/Ankhi Lindemyer/

Ankhi Lindemyer

Trademark Examining Attorney

Law Office 123

(571) 270-0254

ankhi.lindemyer@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 February 17, 2021 for

U.S. Trademark Application Serial No. 90279486

 

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. 

 

 

/Ankhi Lindemyer/

Ankhi Lindemyer

Trademark Examining Attorney

Law Office 123

(571) 270-0254

ankhi.lindemyer@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 February 17, 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.”