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:  October 28, 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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• Prior-Filed Application
• Identification and Classification of Goods and Services – Amendment Required
• Multiple Class Advisory

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 90206676 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Although applicant’s mark has been suspended, applicant may respond to the suspension by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

The following entries in International Class 041 in the identification of goods and services are indefinite and must be clarified because they do not identify the specific subject matter or nature of the services: “Entertainment services in the nature of animated and/or television programs” and “entertainment services in the nature of animated motion picture theatrical films.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, applicant has included the term “and/or” or “or” in the identification of services in International Class 041.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the nature of the services in unclear.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Applicant must also clarify the wording “non-fungible tokens (NFTS)” in the identification of goods and services in International Class 042 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods or services are.  Further, this wording could identify goods or services in more than one international class.  For example, it could identify “downloadable music files authenticated by non-fungible tokens (NFTs)” in International Class 009 or “provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs)” in International Class 035.

 

Applicant has classified “providing online non-downloadable software for providing access to crypto-collectibles, non-fungible tokens and other application tokens” in International Class 041; however, the proper classification is International Class 042.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class, (2) deleting “providing online non-downloadable software for providing access to crypto-collectibles, non-fungible tokens and other application tokens” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  

 

If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following, if accurate: 

 

IC 009: Downloadable software for viewing crypto-collectibles, non-fungible tokens and other application tokens; downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting crypto-collectibles, non-fungible tokens and other application tokens; downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions; downloadable software for processing transactions related to crypto-collectibles, non-fungible tokens and other application tokens; downloadable authentication software for communications with computers and computer networks

 

IC 025: Apparel, namely, hats, t-shirts, and sweatshirts

 

IC 035: Provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs)

 

Class 41: Providing online non-downloadable software for providing access to crypto-collectibles, non-fungible tokens and other application tokens; Entertainment services in the nature of ongoing animated and/or television programs in the field of {indicate field or subject matter}; entertainment services in the nature of production of animated television programs; entertainment services in the nature of development, creation, production, distribution, and post-production of animated motion picture theatrical films

 

IC 042: Non-fungible tokens (NFTs); providing online non-downloadable software for providing access to crypto-collectibles, non-fungible tokens and other application tokens; platform as a service (PAAS) featuring software platforms for providing access to crypto-collectibles, non-fungible tokens and other application tokens; platform as a service (PAAS) featuring software platforms for downloading software, data, and image files from the Internet; providing temporary use of online non-downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, crypto-collectibles, non-fungible tokens and other application tokens, and managing digital transactions; software as a service (SAAS) services and platform as a service (PAAS) featuring software for use in connection with providing a digital platform for navigating digital art, crypto-collectibles, non-fungible tokens and other application tokens, and non-fungible token marketplaces and auctions; Software as a service (SAAS) services and platform as a service (PAAS) featuring software for use in connection with providing information for digital art, crypto-collectibles, non-fungible tokens and other application tokens.

Scope Advisory

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 ADVISORY

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

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.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address the requirements in this Office action.  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.

 

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 suspension and requirements 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.    

 

 

/Katherine A. Mahoney/

Katherine A. Mahoney

Examining Attorney

Law Office 127

(571)-272-3325

Katherine.Mahoney@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 October 28, 2021 for

U.S. Trademark Application Serial No. 90596620

 

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. 

 

 

/Katherine A. Mahoney/

Katherine A. Mahoney

Examining Attorney

Law Office 127

(571)-272-3325

Katherine.Mahoney@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 October 28, 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.”