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:  September 01, 2021

 

This Office action responds to applicant’s communication dated 07/29/2021 where applicant:

(1)    Argued against the Section 2(d) refusals

(2)    Amended the identification of goods and services

The examining attorney reviewed the applicant’s response and determined the following:

 

(1)   The assigned trademark examining attorney inadvertently omitted a refusal relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the examining attorney omitted a citation to RN 4756521, also owned by Apple, Inc. The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

(2)   Applicant’s arguments against the Section 2(d) Likelihood of Confusion Refusal are not persuasive for the reasons stated below and the Section 2(d) Likelihood of Confusion Refusal is maintained and continued.

(3)   The identification of goods and services remains indefinite for the reasons stated below. Therefore, the requirement is maintained and continued.

The following is a Summary of Issues that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion based on RN 4756521
• Section 2(d) Refusal – Likelihood of Confusion based on RN 4786514 and RN 5533416 – Maintained and Continued
• Identification of Goods and Services Indefinite – Amendment Required

 

Section 2(d) Refusal – Likelihood of Confusion based on RN 4756521

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4756521.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Registrant owns the mark consisting of a camera design for “Computer software for video calling; computer software for video telephony; computer software for the transmission of voice, audio and video content; cameras” in Class 09.

 

Applicant applied-for the mark consisting of a camera design for “Downloadable software for use in the fields of audio teleconferencing, video teleconferencing, network conferencing services, instant messaging services, audio and video telecommunications, teleconferencing services, telepresence conferencing services, web conferencing services, and web messaging namely, software for transmitting digital audio, video, and data files; Hardware, namely, digital video cameras, microphones, and digital video display monitors; Downloadable computer software for providing information about conferences in the field of digital communications, namely, information and notifications about conference activities and scheduling, conference speakers, exhibitors, attendees, and conference logistics; Downloadable software for users to create and host content for ticketed online events featuring live and recorded audio-visual content” in Class 09; “Audio teleconferencing; Network conferencing services; Instant messaging services; Teleconferencing services; Telepresence conferencing services; Video teleconferencing; Web conferencing services; Web messaging; Communication services, namely, transmission of voice, audio, visual images, and data by telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks” in Class 38; and “Software as a service (SAAS) services featuring software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, teleconferencing, network conferencing, web conferencing, and instant messaging; Providing a website featuring technology that enables users to search and register for attendance at business events, educational events, social events and live entertainment and performance events; Providing a website featuring on-line non-downloadable software that enables users to create and host content for ticketed online events featuring live and recorded audio-visual content” in Class 42.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks.”); TMEP §1207.01. 

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

When the marks at issue are both design marks, similarity of the marks is determined primarily on the basis of visual similarity.  See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007); TMEP §1207.01(c).  However, a side-by-side comparison is not the test.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973).  When comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).

 

The applicant’s applied for mark consists of the design of a camera in white that points to the right, which is formed by a “v” shaped lens and a rectangular body. The camera design is within a blue square with rounded edges.

 

The cited mark also consists of the design of a camera in white that points to the right, which is formed by a “v” shaped lens and a rectangular body. The camera design is within a green square with rounded edges.

 

The overall commercial impression conveyed by the marks is virtually identical. The marks consist of a camera within a square with curved edges, suggesting that the goods and services relate to video and transmission thereof.

 

Additionally, there is a very high degree of visual similarity between the marks. The marks consist of a nearly identical camera design, in white, which points to the right, and is made up of a “v” shaped lens on a rectangle. Additionally, the marks are all within a square with rounded sides that has a degree of shading within.

 

Although there are some differences in the design features, these differences will not obviate the likelihood of confusion. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). Here, the slight differences in design does not change or alter the overall commercial impression of the marks. As a result, the ordinary purchaser, retaining a general rather than specific impression of the marks, is likely to be confused as to the source of the goods because of the high degree of similarity in the design and commercial impression it invokes.

 

Thus, the marks are confusingly similar.

 

Relatedness of the Goods and Services

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration use broad wording to describe “Computer software for video calling; computer software for video telephony; computer software for the transmission of voice, audio and video content; cameras” which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “Downloadable software for use in the fields of audio teleconferencing, video teleconferencing, network conferencing services, instant messaging services, audio and video telecommunications, teleconferencing services, telepresence conferencing services, web conferencing services, and web messaging namely, software for transmitting digital audio, video, and data files; digital video cameras; Downloadable software for users to create and host content for ticketed online events featuring live and recorded audio-visual content.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

Furthermore, the compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

Here, registrant’s “Computer software for video calling,” “computer software for video telephony,” and “computer software for the transmission of voice, audio and video content” is highly related to the applicant’s “Audio teleconferencing; Network conferencing services; Instant messaging services; Teleconferencing services; Telepresence conferencing services; Video teleconferencing; Web conferencing services; Web messaging; Communication services, namely, transmission of voice, audio, visual images, and data by telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks” in Class 38 and “Software as a service (SAAS) services featuring software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, teleconferencing, network conferencing, web conferencing, and instant messaging” and “Providing a website featuring on-line non-downloadable software that enables users to create and host content for ticketed online events featuring live and recorded audio-visual content” in Class 42 and “

 

The attached Internet evidence, consisting of screenshots from the websites of third-party providers WEBEX, RINGCENTRAL, and INTERMEDIA, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and services and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

The trademark examining attorney has attached a representative sample of evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case.  This evidence shows that the goods and services listed therein, namely communications services in Class 38 and downloadable software related to those services in Class 09, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). See U.S. Registration Nos. 6457361, 6447850, 6315501, 6342823, 6226871, 6201367, 5991670, 5894003, 5591014, 5149689.

 

Thus, the goods and services are closely related.

 

Because the marks are confusingly similar and the goods and services are closely related, purchasers encountering these goods and services are likely to mistakenly believe that the goods emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Response to Section 2(d) – Likelihood of Confusion Refusal

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Section 2(d) Refusal – Likelihood of Confusion based on RN 4786514 and RN 5533416 – Maintained and Continued

 

Applicant also argues that it has concurrently used its mark with the ‘514 registration for over seven years and with the ‘416 mark for four years without actual confusion. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination.  In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).

 

Applicant argues that it has priority of use over the ‘416 registration. Applicant’s claim of priority of use is not relevant to this ex parte proceeding.  See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971).  Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate.  During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration.  TMEP §1207.01(d)(iv).

 

The applicant argue the marks themselves are not confusingly similar by point out specific differences in the marks. However, when comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). Here, the overall commercial impression as gleaned by the recollection of the average purchaser, who retains a general rather than specific impression of trademarks, are essential identical. The specific minute differences referenced by applicant will not obviate the likelihood of confusion between the marks.

 

The applicant argues that the marks are memorably different such that an ordinary purchaser is not likely to confuse the two. To support its contention applicant (1) provided an example of seven registrations using a camera design in its mark and (2) six examples of entities using the camera icon in rendering its video conferencing software or services.

 

Of the seven registrations applicant cited for dilution, five of registrations contain distinctive wording separate and apart from the design that clearly differentiates the marks. Additionally, there are very notable and significant visual differences that create a different commercial impression overall in these marks. For example, the use of a cloud, the use of a location marker, the use of a camera monopod, the use of an arrow or play button, and the use of a telephone icon, among other significance differences.  Thus, these marks actually highlight how similar the cited marks are to the applicant’s mark in the absence of distinguishing features.

 

Additionally, the six examples of entities using a camera icon within their programs does not indicate trademark dilution. These uses are not trademark usage, but merely functionality provided within the program for operating the camera function. They are within a dashboard of teleconferencing functions, such as a mute button, telephone button, screen sharing button, etc, that consumers do not look to for source indication purposes. Thus, these uses do not suggestion trademark dilution.

 

The applicant argues the goods and services in ‘416 registration are “quite different”. While the identifications may not be identical, they are related such that consumers are likely to believe the same entity provides the same type of software.  The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). The attached evidence demonstrates that the same entity commonly provides software for editing and teleconferencing software. Moreover, applicant identified “Downloadable software for users to create and host content for ticketed online events featuring live and recorded audio-visual content” in Class 09. Typically, software that enables a consumer to create audio-visual content includes the ability to edit said content.

 

Additionally, applicant overlooks and ignores the remaining functions identified by the registrant in ‘416. Applicant focuses solely on the editing portion of the identification, and ignores the other functions of applicant’s software, namely, software for use in creating, importing, exporting, and sharing video and multimedia content, which is clearly encompassed by applicant’s identified goods and services.

 

The applicant stated that they believe it was in error that the examining attorney stated the registrant’s Class 42 services are related to the applicant’s hardware. Applicant is correct that the class was misidentified. The examining attorney intended the Class 09 identification of RN 5533416, which the evidence attached to the initial Office action demonstrates.

 

Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Identification of Goods and Services Indefinite – Amendment Required

 

The wording “Downloadable software for users to create and host content for ticketed online events featuring live and recorded audio-visual content” in Class 09 and “Providing a website featuring on-line non-downloadable software that enables users to create and host content for ticketed online events featuring live and recorded audio-visual content” remains indefinite.

 

As stated in the initial Office action, the wording “host content” is indefinite. Hosting could be used in the technical meaning of hosting the webpages of others or providing hosting software for use by others, or it could refer to users “hosting” in the colloquial sense of a person who invites and entertain guests to live or recorded shows, conferences, etc. for others to watch. Applicant states that it amended the identification to what was accepted in SN 90252389, which is not accurate. Applicant may amend the wording “host” to “stream” to match what was previous accepted in SN 90252389.

 

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 e-mail the examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide explanation about the requirements in this Office action. See TMEP §§705.02, 709.06.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/John T. Billings, Esq./

Trademark Examining Attorney

Law Office 113

(571) 272-0186

john.billings@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.