Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

 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 30, 2021

 

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.

 

SEARCH OF USPTO 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:

      I.         Identification of Goods and Services Partial Requirement

     II.         Partial Abandonment Advisory

 

1. IDENTIFICATION OF GOODS AND SERVICES PARTIAL REQUIREMENT

 

Indefinite Identification

 

The following identifications of goods and services is indefinite and must be clarified because the type of good or service is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 9: Downloadable software to provide a video sharing portal, namely, a web site featuring temporary use of non-downloadable software allowing web site users to upload on-line videos for sharing with others for entertainment and educational purposes; providing downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks; providing downloadable software to enable sharing of multimedia content and comments among users; providing downloadable software to enable content providers to track multimedia content; providing downloadable analytics software, namely, software for calculating and reporting statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games, and other user generated content

 

Class 25: headgear, namely, hats, caps, beanies

 

Class 35: Consultation in the field of advertising; Business administration; Office functions; Market research and information; Marketing research, market analysis and reporting online marketing activities of others

 

Class 38: Providing online community forums for the sharing and transmission of information and electronic media where users may post, search, watch, share, critique, rate, and comment on videos and other multimedia content via the Internet and other communications networks; Providing access to computer, electronic and online databases, and provision of information, and advice and consultancy services in relation to all the aforementioned services

 

Class 41: Education and entertainment services, namely, providing a website featuring audio clips, video clips, musical performances, musical videos, film clips, photographs, and related entertainment information; Providing blogs in the fields of electronic media, multimedia broadcasting, videos, movies, pictures, photos, creating user-generated content, audio content and related information

 

Class 42: Hosting computer websites; Hosting databases on the Internet

 

Suggested Identification

 

Applicant may substitute the following wording, if accurate. The bold formatting represents new or edited wording, the bold italic formatting represents wording to be filled in by the applicant, and the strikethrough formatting represents wording to be deleted by the applicant:

 

Class 9: Downloadable software for providing a video sharing portal, namely, a web site featuring temporary use of non-downloadable software allowing web site users to upload on-line videos for sharing with others for entertainment and educational purposes; providing downloadable software for enabling uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks; providing downloadable software for enabling sharing of multimedia content and comments among users; providing downloadable software for enabling content providers to track multimedia content; providing downloadable analytics software, namely, downloadable software for calculating and reporting statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games, and other user generated content

 

Class 25: Clothing, namely, shirts, T-shirts, jackets, sweaters, sweatshirts, vests, shorts, bodysuits, cloth bibs, jerseys, pullovers, socks; footwear; headwear, namely, hats, caps, beanies

 

Class 35: Advertising and promotional services; Advertising and promotional services on behalf of others; Consultation services in the field of advertising; Promotional services in the form of sharing of multimedia content via the Internet and other communications networks, namely, promoting and marketing the goods and services of others by providing hyperlinks to websites of others; Developing marketing plans and marketing campaigns; Business management; Business administration services; Business consulting and information services; Providing office functions; Market research and provision of market research information; Business monitoring services, namely, tracking web sites of others to provide details about user click traffic or visits to the web site; Marketing research, market analysis and reporting online marketing activities of others for third parties

 

Class 38: Transfer of data by telecommunications; Audio, video and multimedia broadcasting via the Internet and other communications networks; Webcasting services; Electronic transmission of messages, data and content via the Internet and other communications networks; Providing online forums and chat rooms for the transmission of messages, comments and multimedia content among users in the field of general interest via the Internet and other communications networks; Electronic transmission of electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content and information via the Internet and other communications networks; Providing online community forums for the sharing and transmission of information and electronic media where users may post, search, watch, share, critique, rate, and comment on videos and other multimedia content in the field of {indicate field or subject of forum} via the Internet and other communications networks; Providing access to computer, electronic and online databases, and provision of information, and advice and consultancy services in relation to all the aforementioned services in the field of {indicate field or subject matter, e.g., telecommunications}

 

Class 41: Education and entertainment services, namely, providing a website featuring audio clips, video clips, musical performances, musical videos, film clips, photographs, and related entertainment information in the fields of {indicate subject matter or field, e.g., education and entertainment}; Publication of online journals; Providing a website featuring blogs in the fields of electronic media, multimedia broadcasting, videos, movies, pictures, photos, creating user-generated content, audio content and related information

 

Class 42: Providing a video sharing portal, namely, a web site featuring temporary use of non-downloadable software allowing web site users to upload on-line videos for sharing with others for entertainment and educational purposes; Design and development of computer hardware and software; Providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks; Providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; Providing temporary use of non-downloadable software to enable content providers to track multimedia content; Providing temporary use of non-downloadable analytics software, namely, software for calculating and reporting statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games, and other user generated content; Hosting digital multimedia content for others; Hosting digital multimedia entertainment and educational content for others; Hosting of computer web sites; Hosting databases on the Internet for others; Software as a service (SAAS) services featuring software for enabling uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks

 

Class 45: On-line social networking services

 

Scope Advisory

 

Applicant’s goods and 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 services or add goods and 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 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 services will further limit scope, and once goods and 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.

 

2. PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Classes 9, 25, 35, 38, 41, and 42 will be deleted from the application: 

 

Class 9: Downloadable software to provide a video sharing portal, namely, a web site featuring temporary use of non-downloadable software allowing web site users to upload on-line videos for sharing with others for entertainment and educational purposes; providing downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks; providing downloadable software to enable sharing of multimedia content and comments among users; providing downloadable software to enable content providers to track multimedia content; providing downloadable analytics software, namely, software for calculating and reporting statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games, and other user generated content

 

Class 25: headgear, namely, hats, caps, beanies

 

Class 35: Consultation in the field of advertising; Business administration; Office functions; Market research and information; Marketing research, market analysis and reporting online marketing activities of others

 

Class 38: Providing online community forums for the sharing and transmission of information and electronic media where users may post, search, watch, share, critique, rate, and comment on videos and other multimedia content via the Internet and other communications networks; Providing access to computer, electronic and online databases, and provision of information, and advice and consultancy services in relation to all the aforementioned services

 

Class 41: Education and entertainment services, namely, providing a website featuring audio clips, video clips, musical performances, musical videos, film clips, photographs, and related entertainment information; Providing blogs in the fields of electronic media, multimedia broadcasting, videos, movies, pictures, photos, creating user-generated content, audio content and related information

 

Class 42: Hosting computer websites; Hosting databases on the Internet

 

The application will then proceed with the following goods and services in International Classes 25, 35, 38, 41, 42, and 45 only: 

 

Class 25: Clothing, namely, shirts, T-shirts, jackets, sweaters, sweatshirts, vests, shorts, bodysuits, cloth bibs, jerseys, pullovers, socks; footwear

 

Class 35: Advertising and promotional services; Advertising and promotional services on behalf of others; Promotional services in the form of sharing of multimedia content via the Internet and other communications networks, namely, promoting and marketing the goods and services of others by providing hyperlinks to websites of others; Developing marketing plans and marketing campaigns; Business management; Business consulting and information services; Business monitoring services, namely, tracking web sites of others to provide details about user click traffic or visits to the web site

 

Class 38: Transfer of data by telecommunications; Audio, video and multimedia broadcasting via the Internet and other communications networks; Webcasting services; Electronic transmission of messages, data and content via the Internet and other communications networks; Providing online forums and chat rooms for the transmission of messages, comments and multimedia content among users in the field of general interest via the Internet and other communications networks; Electronic transmission of electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content and information via the Internet and other communications networks

 

Class 41: Publication of online journals

 

Class 42: Providing a video sharing portal, namely, a web site featuring temporary use of non-downloadable software allowing web site users to upload on-line videos for sharing with others for entertainment and educational purposes; Design and development of computer hardware and software; Providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks; Providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; Providing temporary use of non-downloadable software to enable content providers to track multimedia content; Providing temporary use of non-downloadable analytics software, namely, software for calculating and reporting statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games, and other user generated content; Hosting digital multimedia content for others; Hosting digital multimedia entertainment and educational content for others; Software as a service (SAAS) services featuring software for enabling uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and reproducing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks

 

Class 45: On-line social networking services

 

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

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirement in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

/Shannon B. Keating/

Shannon Keating

Trademark Examining Attorney

Law Office 126

571-270-3734

shannon.keating@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 March 30, 2021 for

U.S. Trademark Application Serial No. 90313237

 

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. 

 

 

/Shannon B. Keating/

Shannon Keating

Trademark Examining Attorney

Law Office 126

571-270-3734

shannon.keating@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 30, 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.”