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:  May 02, 2022

 

 

Introduction

 

The referenced application and preliminary amendment have 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.

 

Summary of Issues

 

• Search Results – No Conflicting Marks Found
• Premature Use Refusal
• Identification of Goods and Services Requires Amendment

 

Search Results – No Conflicting Marks Found

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Premature Use Refusal

 

Registration is refused because the specimen shows that applicant has not used the applied-for mark in commerce in connection with the identified goods and services as of the application filing date.  Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §2.34(a)(1)(i); see TMEP §§904, 1301.03(a). 

 

The use or display of a mark in the sale or advertising of goods and 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). In this case, the specimen advertises the opportunity to win NFT’s in a contest that has not yet occurred, and therefore, the specimen does not demonstrate use of the mark in commerce in association with the goods and services identified in the application.

 

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).

 

Identification of Goods and Services Requires Amendment

 

At the outset, the examining attorney notes that applicant filed a preliminary amendment to modify the identification of goods and services on February 23, 2022. Particular wording in 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 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 services as follows: 

 

International Class 009: Digital media, namely, digital collectibles, digital tokens, non-fungible tokens (NFTs) and digital art; Non-fungible tokens (NFTs) and other application tokens; non-fungible tokens used with blockchain technology; non-fungible tokens used with blockchain technology to represent a collectible item; non-fungible tokens featuring collectible images and videos; non-fungible tokens featuring digital art; digital tokens used with blockchain technology; digital tokens used with blockchain technology to represent a collectible item; digital tokens used with blockchain technology for data storage and content access limitation

 

International Class 042: Providing on-line non-downloadable virtual goods, namely, digital art, photographs, videos, or audio recordings; providing online digital artwork and images; non-fungible tokens (nfts) or other digital tokens based on blockchain technology

 

However, the proposed amendment identifies the following goods and services:

 

International Class 009: Mobile applications, namely, computer application software for mobile and smart phones for web browsing, retail services and shopping, e-commerce services, device and account management, audio and video streaming; Digital media, namely, digital collectibles, digital tokens, non-fungible tokens (NFTs) and digital art; Non-fungible tokens (NFTs) and other application tokens; non-fungible tokens used with blockchain technology; non-fungible tokens used with blockchain technology to represent a collectible item; non-fungible tokens featuring collectible images and videos; non-fungible tokens featuring digital art; digital tokens used with blockchain technology; digital tokens used with blockchain technology to represent a collectible item; digital tokens used with blockchain technology for data storage and content access limitation; non-fungible tokens (nfts) or other digital tokens based on blockchain technology

 

International Class 042: Providing on-line non-downloadable virtual goods, namely, digital art, photographs, videos, or audio recordings; providing online digital artwork and images; providing online non-downloadable software featuring non-fungible tokens (nfs) or other digital tokens based on blockchain technology 

 

The bolded portion of the proposed amendment is beyond the scope of the original identification because it adds goods and services that were not covered by the original application. 

 

In addition, all of the wording in the identification of goods and services is indefinite and must be clarified because it is not clear what the precise nature of the goods and services are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identifications for NFTs and “digital artwork and images” in International Classes 9 and 42 are indefinite and too broad and must be clarified to specify whether the 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.  See TMEP §1402.03(d).

 

Applicant may substitute the following wording, if accurate: 

 

International Class 009: Downloadable digital media, namely, digital collectibles in the nature of ____ {specify, e.g., music files, video files, digital artwork} authenticated by non-fungible tokens (NFTs); downloadable digital media, namely, digital tokens in the nature of ____ {specify, e.g., music files, video files, digital artwork} authenticated by non-fungible tokens (NFTs); downloadable ____{specify the particular goods that are represented by the NFTs, e.g., multimedia files containing artwork, video recordings featuring memes, etc.) authenticated by non-fungible tokens (NFTs); downloadable digital media, namely, digital art authenticated by non-fungible tokens (NFTs); downloadable____{specify the particular goods that are represented by the NFTs, e.g., multimedia files containing artwork, video recordings featuring memes, etc.) authenticated by non-fungible tokens (NFTs); downloadable _____ {specify the particular goods that are represented by the NFTs, e.g., video recordings featuring memes, multimedia file containing artwork relating to cosmetics, etc.} authenticated by non-fungible tokens used with blockchain technology; collectible items, namely, _____ {specify the particular goods that are represented by the NFTs, e.g., downloadable video recordings featuring memes, downloadable multimedia file containing artwork relating to cosmetics, etc.} authenticated by non-fungible tokens used with blockchain technology; downloadable collectible images and videos authenticated by non-fungible tokens; downloadable digital art authenticated by non-fungible tokens; digital tokens used with blockchain technology to represent ____{specify the particular goods that are represented by the tokens, e.g., downloadable multimedia files containing artwork, downloadable video recordings featuring memes, etc.); digital tokens used with blockchain technology to represent a collectible item, namely, ____{specify the particular goods that are represented by the tokens, e.g., downloadable multimedia files containing artwork, downloadable video recordings featuring memes, etc.}; digital tokens representing _____ {specify the particular goods that are represented by the tokens, e.g., downloadable multimedia files containing artwork, downloadable videos} used with blockchain technology for data storage and content access limitation; downloadable multimedia file containing artwork relating to {indicate field of subject matter of file}

 

International Class 042: Entertainment services, namely, providing on-line non-downloadable virtual goods, namely, digital art, photographs, videos, or audio recordings for use in virtual environments created for entertainment purposes; Providing online non-downloadable digital artwork and images

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services may not later be reinserted.  See 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.

 

Response Guidelines

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and 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 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.    

 

 

/Abigail Lueken/

Abigail Lueken

Examining Attorney, Law Office 303

U.S. Patent and Trademark Office

Abigail.lueken@uspto.gov

(571) 270-3726

 

 

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 May 02, 2022 for

U.S. Trademark Application Serial No. 97115394

 

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.  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 trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         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 is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.