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:  August 27, 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.

 

PRIOR-FILED APPLICATION MAY BAR REGISTRATION

 

The filing date of pending U.S. Application Serial No. 90121719 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.

 

ADVISORY: CLAIM OF OWNERSHIP OF POTENTIALLY CONFLICTING APPLICATION

 

If the mark(s) in the potentially conflicting prior-filed application(s) has been assigned to applicant, applicant may provide evidence of ownership of the mark(s) to avoid a possible refusal under Trademark Act Section 2(d) based on a likelihood of confusion.  See 15 U.S.C. §1052(d); TMEP §812.01. 

 

Applicant may provide evidence of ownership of the mark(s) by satisfying one of the following:

 

(1)        Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)        Submit copies of documents evidencing the chain of title; or

 

(3)        Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of Application Serial No. 90121719.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that  “Applicant is the owner of Application Serial No. 90121719,” inserting the relevant application serial number; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

The following issues require a response.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

• Amendment to Identification of Goods and Services Required
• Multiple-Class Application Requirements
• Foreign Registration Certificate Required

 

AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and services in an application based on Section 44 of the Trademark Act, 15 U.S.C. §1126, must comply with the same standards that govern other applications.  TMEP §1402.01(b).  The applicant must identify the goods and services specifically, to enable the USPTO to classify the goods and services properly and to reach informed judgments concerning likelihood of confusion under §2(d) of the Trademark Act, 15 U.S.C. §1052(d).  Id.

 

As to International Class 9

 

In the present case, the following entries in the identification of goods in International Class 9 require further clarification:

 

• Computer program for type
• electronic and magnetic storage media containing type images, typefaces, typeface designs

 

The wording “computer program for type” is indefinite and too broad because it does not make clear what the goods are and could identify goods in more than one international class.  Additionally, the function of the program (“type”) is not sufficiently clear.  Further specification as to what the program helps to type is needed in order to clearly indicate the function—and, in turn, the nature—of the computer program.  Identifications for software must specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).  Applicant may substitute the following wording, if accurate:  “Downloadable computer program for type, namely, downloadable computer software containing fonts and typefaces for use with word-processing software.”

 

The wording “electronic and magnetic storage media containing type images, typefaces, typeface designs” is indefinite and must be amended to provide additional detail regarding the identified “type images.”  Applicant may substitute the following wording, if accurate: “electronic and magnetic storage media containing type images being fonts, typefaces, and typeface designs.”

 

As to International Class 16

 

The following entries in International Class 16 require further clarification:

 

• Printing fonts, printing stencils, printing templates and type templates for various fonts, typefaces and typeface designs
• printing stencils, printing matrices, printing products and photographic images containing fonts and typeface designs of alphanumeric characters and typographic symbols
• printing stencils and printing matrices containing character sets of letters and digits

 

The wording “Printing fonts, printing stencils, printing templates and type templates for various fonts, typefaces and typeface designs” is indefinite because it does not make clear what the goods are.  In addition, the wording “printing fonts,” “printing templates,” and “type templates” could identify goods in more than one international class.  For example, “downloadable printing fonts” are in International Class 9, and “printing fonts being printing type” are in International Class 16.  Furthermore, “printing templates being printing plates” and “type templates being printing plates” are in International Class 7, and “printing templates being printing blocks” and “type templates being printing blocks” are in International Class 16.  Applicant must therefore provide additional detail to clarify the nature of the “printing fonts,” “printing templates,” and “type templates.”  Applicant may use the following format to provide an acceptable identification in International Class 16:  “Printing fonts being printing type, printing stencils, printing templates being {specify Class 16 goods, e.g., printing blocks}, and type templates being {specify Class 16 goods, e.g., printing blocks} for various fonts, typefaces and typeface designs.”  To identify Class 7 goods, applicant may use the following wording: “Printing templates and type templates in the nature of printing plates for various fonts, typefaces, and typeface designs.”

 

The wording “printing stencils, printing matrices, printing products and photographic images containing fonts and typeface designs of alphanumeric characters and typographic symbols” is indefinite and must be amended to clarify the identified “printing matrices” and “printing products.”  Applicant must specify the common commercial or generic name of the goods, and/or additional detail regarding their function or purpose.  In addition, effective January 1, 2021, identifications for photographs must indicate if the photographs are “printed,” “downloadable,” or “recorded on computer media” (or equivalent wording) for proper classification.  Photographs are classified in International Class 16, if printed, and in International Class 9, if downloadable or recorded on computer media.  See ID Manual, Term ID No. 016-1991.

 

Applicant may use the following format to provide an acceptable identification in International Class 16: “printing stencils, printing matrices being {specify Class 16 goods, e.g., stencils}, printing products being {specify Class 16 goods, e.g., printing blocks} and printed photographic images containing fonts and typeface designs of alphanumeric characters and typographic symbols.”  To identify photographs in International Class 9, applicant may use the following wording, if accurate: “downloadable photographic images containing fonts and typeface designs of alphanumeric characters and typographic symbols.”

 

The wording “printing stencils and printing matrices containing character sets of letters and digits” is indefinite and must be amended to further clarify the identified “printing matrices.”  Applicant must specify the common commercial or generic name of the goods and/or their function or purpose.  Applicant may substitute the following wording, if accurate: “printing stencils and printing matrices being {specify Class 16 goods, e.g., stencils} containing character sets of letters and digits.”

 

As to International Class 42

 

In International Class 42, the wording “Development of software for storing, displaying and making available characters” is indefinite and must be amended to clarify the nature of the referenced “characters.”  Applicant may substitute the following wording, if accurate: “Development of software for storing, displaying and making available font characters.”

 

For each instance requiring additional clarification, the examining attorney has provided an example of an acceptable amendment (or the format therefor) below.  If the suggestions below are not accurate, the applicant is encouraged to use the USPTO’s online Identification Manual (see ID Manual link below) to search for acceptable wording to properly identify the intended goods and services.

 

EXAMPLE IDENTIFICATION OF GOODS AND SERVICES:  The following is an example of an acceptable identification of goods and services that applicant may adopt, if accurate (additions in bold).

 

In International Class 7:	Printing templates and type templates in the nature of printing plates for various fonts, typefaces, and typeface designs
In International Class 9:	Downloadable computer program for type, namely, downloadable computer software containing fonts and typefaces for use with word-processing software; downloadable fonts and typefaces; electronic and magnetic storage media containing type images being fonts, typefaces, typeface designs; downloadable photographic images containing fonts and typeface designs of alphanumeric characters and typographic symbols
In International Class 16:	Printing fonts being printing type, printing stencils, printing templates being {specify Class 16 goods, e.g., printing blocks}, and type templates being {specify Class 16 goods, e.g., printing blocks} for various fonts, typefaces and typeface designs; printing stencils, printing matrices being {specify Class 16 goods, e.g., stencils}, printing products being {specify Class 16 goods, e.g., printing blocks} and printed photographic images containing fonts and typeface designs of alphanumeric characters and typographic symbols; printing stencils and printing matrices being {specify Class 16 goods, e.g., stencils} containing character sets of letters and digits
In International Class 42:	Development of software for storing, displaying and making available font characters; Online non-downloadable computer program for type, namely, online non-downloadable computer software containing fonts and typefaces for use with word-processing software

 

SCOPE ADVISORY:  Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

ONLINE ID MANUAL:  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.

 

For information on how to identify the goods and services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video Number 6, “Goods and Services.”

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 44:

 

(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 four classes; however, applicant submitted a fee(s) sufficient for only three 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

RESPONDING TO THIS OFFICE ACTION

 

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.

 

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 refusal(s) and/or requirement(s) 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.    

 

 

/Todd J. Lewellen/

Todd J. Lewellen

Examining Attorney

Law Office 110

571-272-3199

todd.lewellen@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 August 27, 2021 for

U.S. Trademark Application Serial No. 90647980

 

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. 

 

 

/Todd J. Lewellen/

Todd J. Lewellen

Examining Attorney

Law Office 110

571-272-3199

todd.lewellen@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 August 27, 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.”