To: | V-Shojo Inc. (tm@odinlaw.com) |
Subject: | U.S. Trademark Application Serial No. 90340985 - VSHOJO - 00680 |
Sent: | May 11, 2021 01:48:52 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90340985
Mark: VSHOJO
|
|
Correspondence Address: |
|
Applicant: V-Shojo Inc.
|
|
Reference/Docket No. 00680
Correspondence Email Address: |
|
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: May 11, 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.
SEARCH OF USPTO DATABASE OF MARKS
TRADEMARK ACT SECTIONS 1 AND 45 REFUSAL – SPECIMEN
THIS REFUSAL IS LIMITED TO THE SERVICES IN CLASS 35
Specimen does not show direct association between mark and services. Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 35. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that the specimen (screenshots of applicant’s website and Facebook website) shows promotion or advertising of a live feed and allows users to launch video, and provides a “talent” list of cartoon personalities that users may interact with. There is no connection or reference to the identified services in Class 35 (“Talent agency services; employment talent agencies; talent agencies for virtual talent, virtual entertainers, vtubers and vtube industry service providers; branding services, namely, consulting, development, management of brands for others in the field of virtual entertainment; brand imagery consulting services for others in the field of virtual entertainment; brand development and evaluation services in the field of virtual entertainment; brand consulting services, namely, brand development and social media strategy consultancy focusing on helping clients create and extend their brand strategies in the fields of virtual entertainment; talent agency services, namely, securing endorsement and sponsorship opportunities from corporate and other third party entities for virtual entertainers”).
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
IDENTIFICATION OF SERVICES REQUIRES AMENDMENT
The wording “employment talent agencies; talent agencies for virtual talent, virtual entertainers, vtubers and vtube industry service providers” in the identification of services in Class 35 is indefinite and must be clarified because the particular type of service is not clear and must be specified, and it is not clear what is meant by “vtubers and vtube.” See TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).
The wording “Entertainment services, namely, providing non-downloadable anime, videos, movies, television series, user-generated content, audio content, and other multimedia entertainment content featuring virtual talent via the Internet and other communications networks; Entertainment services, namely, providing non-downloadable anime, videos, movies, television series, user-generated content, audio content, and other multimedia entertainment content featuring virtual talent via the Internet and other communications networks; providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information, comments, reviews, recommendations relating to vtuber and anime, videos, movies, television series and other multimedia materials” in the identification of services in Class 41 is indefinite and must be clarified because the particular type of services and subject matters are not clear and must be specified. See TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may adopt the following identification, if accurate (examining attorney’s suggestions in bold font):
Class 35: Talent agency services; Employment services in the nature of talent casting in the field(s) of {specify, e.g., commercials, music, films}; Talent agencies for virtual talent, virtual entertainers, and virtual industry service providers; Branding services, namely, consulting, development, management of brands for others in the field of virtual entertainment; brand imagery consulting services for others in the field of virtual entertainment; brand development and evaluation services in the field of virtual entertainment; brand consulting services, namely, brand development and social media strategy consultancy focusing on helping clients create and extend their brand strategies in the fields of virtual entertainment; Talent agency services, namely, securing endorsement and sponsorship opportunities from corporate and other third party entities for virtual entertainers
Class 38: Transmission of live sound, video and multimedia entertainment in the form of information from web cams, video cameras or mobile phones; Broadcasting of live programs via the internet in the nature of digital video, audio, and multimedia entertainment programs
Class 41: Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text in the field of virtual adult entertainment via a global computer network; Entertainment services, namely, providing non-downloadable computer animation videos in the nature of anime, videos, movies, an ongoing television series, audio recordings, and other multimedia entertainment content in the nature of {specify what other multimedia content is offered} featuring virtual talent {specify subject matter, e.g. adult entertainment} via the Internet and other communications networks; Providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information in the field of virtual reality videos and computer generated animation in the nature of anime, videos, movies, television series and other multimedia materials all featuring adult entertainment, and also featuring user-added comments, reviews, recommendations; Entertainment services in the nature of live visual and audio performances by {specify, e.g., actors, musical bands, dancers, etc.}
See TMEP §§1402.01, 1402.03.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least three classes; however, applicant submitted a fee sufficient for only two classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 41 only, and applicant needs a specimen for classes 35 and 38. See more information about specimens.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
FILING BASIS CLARIFICATION REQUIRED
THIS REQUIREMENT IS LIMITED TO CLASS 35
However, an applicant may not assert both use and intent to use for identical goods or services in the same application. 37 C.F.R. §2.34(b). Accordingly, applicant must either (1) delete one of these bases for these goods and/or services or (2) divide these services between the two bases, as appropriate. See TMEP §806.02(b).
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.
/Jillian Cantor/
Trademark Examining Attorney
Law Office 117
(571) 272-6564
Jillian.Cantor@uspto.gov
RESPONSE GUIDANCE