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:  January 13, 2022

 

 

This Office Action is in response to applicant’s correspondence dated 12/28/21.

 

The following requirement is withdrawn: 1) Mark Description.

 

Applicant should note the following:

 

New Issue – Identification Amendment Exceeds Scope of Services in Original Application

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows:  “On-line advertising and marketing services” in Class 35, and “Electronic transmission and streaming of digital media content for others via global and local computer networks” in Class 38. 

 

However, the proposed amendment added the following services in Class 41:  “Entertainment services in the nature of production of multimedia entertainment content.” 

 

This proposed amendment is beyond the scope of the original identification because “Entertainment services in the nature of production of multimedia entertainment content” was not included in the original identification.  Thus, the amendment is not acceptable. 

 

Specimen

 

The applicant’s arguments are unpersuasive, and the requirement for an acceptable specimen is continued.   For Class 35, applicant has not provided any evidence that it is offering advertising services to others.  There is no reference to applicant enticing third parties to advertise or market products/services through applicant’s programs.    For Class 38, any transmission or streaming is by Google through its YouTube platform. Just because an applicant is conducting an internet-based activity or rendering a service that involves electronic transmission of data, the applicant’s service is not automatically considered a telecommunications service in Class 38.  See TMEP §1402.11(a)(iii).  In this case, applicant itself is not providing the transmission or streaming service. 

 

 

 

 

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 January 13, 2022 for

U.S. Trademark Application Serial No. 90573144

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.