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:  July 01, 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.

 

 

 

DEFERRED SEARCH

 

The trademark examining attorney will defer a search of the USPTO database of registered and pending marks for potentially conflicting marksuntil applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

 

 

 

Significance of the Wording

 

To permit proper examination of the application, applicant must explain whether the wording “gauthmath” in the mark has any significance in the applicant’s trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Identification

 

The wording “Educational computer software; training software; virtual classroom software; computer and mobile software; data communications software; graphics software; computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures and machine learning; Augmented reality software for use in mobile devices for integrating electronic data with real world environments; Electronic publications, downloadable; educational instruments; audio-visual teaching apparatus; teaching and instructional apparatus and instruments; recorded and downloadable media, blank digital or analogue recording and storage media; calculating devices; Application software; application software for education; computer software and software applications for taking, capturing, uploading, transmitting, processing, and displaying pictures, videos, and data; downloadable educational materials; downloadable curriculum materials for teaching; holders adapted for smartphones; USB charges (battery chargers); headsets; speakers; accessories designed for smartphones, mobile phones or tablets; alarms; cases for glasses; optical apparatus and instruments;” “Teaching and educational services; Educational services in the nature of coaching; computer assisted education services; publication of educational and teaching materials; providing training, teaching and tutoring; provision of online tutorials; arranging and conducting of tutorials; educational instruction services; Educational services; training services; tutoring services; educational examinations; entertainment services; providing information and analysis in the field of education and entertainment; presentation of videos online; providing online electronic publications and non-downloadable music and videos; electronic publication of information on a wide range of topics on-line; entertainment and amusement information via internet online; entertainment; organization and presentation of shows, competitions, games, concerts and entertainment events; arranging, organizing, conducting, and hosting education and social entertainment events; arranging and conducting education conferences; Teaching support services, namely, scheduling, notifications and communication services; non-downloadable games for educational use; non-downloadable interactive multimedia computer game programs;” and “Providing non-downloadable computer and mobile software; hosting multimedia educational content; computer and software development systems; Software as a service services featuring software for machine learning, deep learning and deep neural networks; providing artificial intelligence computer programs on data networks; Software as a Service (SaaS); Platform as a Service (PaaS) featuring computer software platforms; Software as a Service (SaaS) relating to hosting of multimedia educational content, game, or entertainment; Platform as a Service (PaaS) relating to hosting of multimedia educational content, game, or entertainment; Platform as a Service (PaaS) relating to hosting online interactive public calendars that allow multiple participants to share event schedules and facility reservations;” in the identification is indefinite and must be clarified because it is unclear, and it includes goods/services in multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The function of the software must be indicated. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “instruments,” “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.  Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.  Applicant may substitute the following wording, if accurate:

 

Class 9 –

Downloadable computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures and machine learning; downloadable augmented reality software for use in mobile devices for integrating electronic data with real world environments; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; calculators; computers and computer peripheral devices; downloadable electronic dictionary; covers for mobile phones and smartphones; cases for smartphones and mobile phones; selfie sticks used as smartphone accessories; mobile phones; straps for smartphones; tablet computers; batteries; battery chargers; USB cables; earphones; headphones; headsets for telephones; audio speakers; protective films adapted for smartphones, mobile phones, or tablets; magnets; burglar alarms; sunglasses; cases for eyewear; video screens; teaching robots; security surveillance robots; humanoid robots with artificial intelligence; cameras;

 

Class 16 –

Educational instruments, namely, mechanical pencils;

 

Class 41 –

Publication of educational books; providing tutorial sessions in the field of mathematics; providing information in the field of education; publication of electronic books and journals on-line; multimedia publishing of printed matter, books, magazines, journals, newspapers, newsletters, tutorials, maps; publication of calendars, graphics, photographs, videos, music and electronic publications; publication of calendars of events; providing entertainment information via internet online; arranging, organizing, conducting, and hosting social entertainment events; arranging and conducting education conferences in the field of mathematics; organization of exhibitions for cultural, educational, or entertainment purposes; Recording studio services; Entertainment services, namely, providing temporary use of non-downloadable computer games for educational purposes; Educational services, namely, developing curriculum for teachers and educators; photography, film and video production services; Teaching services relating to pedagogy techniques; Online library services, namely, providing electronic library services which feature newspapers, magazines, photographs, pictures and videos via an on-line computer network;

 

 

Class 42 –

Providing temporary use of non-downloadable software for developing online educational materials; Product development consultancy for inventors in the field of education; design and development of computer hardware and software; computer programming relating to the provision of online education, game, or entertainment;

 

Class 44 –

Providing educational information about healthcare;

 

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.

 

Multiple-Class Application Requirements

 

The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Standard application is $350 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

 

 

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

 

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 July 01, 2021 for

U.S. Trademark Application Serial No. 90389251

 

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. 

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 July 01, 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.”