To: | MattBatFilms, LLC. (matthew@mattbatfilms.com) |
Subject: | U.S. Trademark Application Serial No. 90460572 - STAXER - N/A |
Sent: | July 28, 2021 06:54:50 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90460572
Mark: STAXER
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Correspondence Address:
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Applicant: MattBatFilms, LLC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 28, 2021
SEARCH OF USPTO DATABASE OF MARKS
I. PREMATURE USE REFUSAL
The use or display of a mark in the sale or advertising of goods and/or services before the goods are actually created or provided or the services rendered does not show use in commerce. See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a).
If applicant’s goods were being sold or transported or the services were being rendered in commerce as of the application filing date, applicant must submit the following:
(1) A different specimen (a verified “substitute” specimen) showing the applied-for mark in use in commerce for the goods and/or services specified in the application. 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).
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the application filing date.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
If applicant did not use the applied-for mark in commerce on or before the filing date, applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. In this case, applicant may wish to amend the application to assert a Section 1(b) basis. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Applicant should note the requirement stated below.
II. IDENTIFICATION OF SERVICES
The wording in the identification of services is indefinite and overly broad, and therefore could include a wide array of services, including services found in other international classes, as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. More specifically, the following identification is unclear as to the primary nature of the services rendered by the applicant: “An online live streaming website that connects creators and viewers to be able to view their live streams and video content for entertainment and educational purposes. Staxer additionally offers a subscription service which is a premium version of the website, named Staxer Elite, allowing visitors to view our catalog of original videos and events”.
Identifications of services should generally be comprised of generic everyday wording for the services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09.
Additionally, this identification could refer to the applicant’s provision of online streaming services which functions as a transmission or telecommunication/connection service; these services would be in Class 038, as proposed below. Alternatively, this identification could also refer to video production services which functions an education and entertainment service, classified in Class 041, as noted below. Additionally, the wording in the identification could refer to the provision of a website featuring technology for video sharing which would function as a software based service; these services would be classified in Class 042, as proposed below.
Applicant may substitute the following wording, if accurate:
(Add Class) International Class 038
Streaming of audio, video, audiovisual, material on the Internet, namely, connecting creators and viewers to be able to view their live streams and streaming video content for entertainment and educational purposes
International Class 041
Providing online non-downloadable videos in the field of {indicate field or subject matter of videos}, namely, providing a catalog of original videos; Video production services, namely, producing videos of events
(Add Class) International Class 042
Providing an interactive website featuring technology that allows users to view live streams and video content for entertainment and educational purposes and to view a catalog of original videos and event videos
See TMEP §1402.01.
Applicant’s 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 services or add 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 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 services will further limit scope, and once 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.
III. 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(s) sufficient for only one class(es). 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 not acceptable for any class, and as such, applicant must submit specimens for any and all classes retained or added to this application. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
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.
Applicant should note the advisory stated below.
IV. MARK ON DRAWING PAGE CONTROLS ADVISORY
When an application includes a mark in the body of the application and a different mark in the drawing or in the “Mark” field, the mark in the drawing controls for purposes of determining what the mark is. In re L.G. Lavorazioni Grafite, S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001); TMEP §807.01. Therefore, the applied-for mark in this application is the mark in the drawing, STAXER.
Applicant should note the response guidelines provided below.
V. 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.
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.
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov
RESPONSE GUIDANCE