To: Illumynous Inc. (youranonnews@hush.ai)

Subject: U.S. TRADEMARK APPLICATION NO. 85950059 - YOUR ANONNEWS - N/A

Sent: 10/10/2013 9:04:28 AM

Sent As: ECOM116@USPTO.GOV

Attachments: Attachment - 1Attachment - 2Attachment - 3Attachment - 4

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

     U.S. APPLICATION SERIAL NO.           85950059     MARK: YOUR ANON NEWS 

         

*85950059*    CORRESPONDENT ADDRESS:          ILLUMYNOUS INC.          PO BOX 22463 BANKERS HALL, R.P.O.          CALGARY, ALBERTA          T2P5G7          CANADA

 CLICK HERE TO RESPOND TO THIS LETTER:http://www.uspto.gov/trademarks/teas/response_forms.jsp

  

 

    APPLICANT: Illumynous Inc. 

  

    CORRESPONDENT’S REFERENCE/DOCKET NO :            N/A    CORRESPONDENT E-MAIL ADDRESS:           youranonnews@hush.ai

 

  

OFFICE ACTION 

STRICT DEADLINE TO RESPOND TO THIS LETTERTO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTOMUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHSOF THE ISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: 10/10/2013    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. SUMMARY OF ISSUES that applicant must address: 

Partial Refusal – Recited Activities are not “Services”Identification Requires ClarificationRequirements Regarding Multiple Class ApplicationsInformation Regarding Services RequiredForeign Certificate of Registration Required

 SEARCH OF OFFICE’S DATABASE OF MARKS The trademark examining attorney has searched the Office’s database of registered and pending marksand has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP§704.02; see 15 U.S.C. §1052(d). RECITED ACTIVITIES ARE NOT “SERVICES” – Partial Refusal With regard to the Class 38 activities identified as “Providing online access to information, audio, andvideo websites, online forums and blogs,” registration is refused because the activities recited in theidentification of services are not registrable services as contemplated by the Trademark Act.  TrademarkAct Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§1301.01 et seq. The activities set forth as services in an application are reviewed using the following criteria to determinewhether they constitute registrable services: (1) A service is a real activity, not an idea, concept, process or system; 

(2) A service is performed primarily for the benefit of someone other than the applicant; and 

(3) A service is an activity that is sufficiently separate and qualitatively different from anapplicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessaryto an applicant’s larger business.

 TMEP §1301.01(a); see In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir.1985); In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984); In re Integrated Res., Inc., 218 USPQ829, 831 (TTAB 1983); In re Landmark Commc’ns, Inc. , 204 USPQ 692, 695 (TTAB 1979). In this case, the description set forth in the identification of services includes:  “Providing online access toinformation, audio, and video websites, online forums and blogs,” in Class 38.   These activities are notregistrable services because they appear to be merely ancillary to, or necessary to the actual services ofproviding the information, blogs, etc.  Applicant may amend this wording, if accurate, to “providingaccess to the Internet,” in Class 38. IDENTIFICATION OF SERVICES The wording “…; …, including uploading, posting, showing, displaying and electronically transmittinginformation, audio, video clips ; Providing online access to information, audio, and video websites, online

forums and blogs, “ in Class 38, and “Providing news, information regarding current events in the field ofpolitics, the media, entertainment, sports, comedy, business, healthy living and fitness, lifestyle andwellness, fashion and beauty, the environment, food, innovation and technology, travel, tourism,education, books, fine arts, performing arts,” in Class 41, in the identification of services is indefinite andmust be clarified because it misclassifies some of the services, it encompasses services classified in moreclasses than currently identified in the application, and it does not identify the services and/or the subjectmatter of the services by the common commercial name.  See TMEP §1402.01. With regard to the information services, please note that information services are classified according tothe subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of properclassification:  “providing information pertaining to purchasing an automobile” in International Class 35;“providing information regarding financing and insuring an automobile” in International Class 36; and“providing information regarding the repair and maintenance of automobiles” in International Class 37. If the information is provided online or via a website, this information should also be included in theidentification of services, e.g., “providing online information in the field of health care information” inInternational Class 44.  To enable proper classification and examination of the application, where notedbelow, applicant must more clearly specify the subject matter of the “information services.” Applicant may adopt the following identification of services, if accurate:  International Class 35Providing online information and news in the field of business. International Class 38Providing an online forum for commentary in the field of politics, the media, entertainment, sports,comedy, business, healthy living, fitness, lifestyle, wellness, fashion, beauty, the environment, food,innovation, technology, travel, tourism, education, books, fine arts, performing arts; audio and videobroadcasting services over the Internet; Providing access to the Internet. International Class 39Providing online travel information, travel tour information. International Class 41Providing online news and information regarding current events in the field of politics, (describe moreclearly what is meant by “the media”) , entertainment, sports, comedy, fitness, education, reviews of books,fine arts, and performing arts. International Class 42Computer services, namely, creating an on-line community for registered users to participate indiscussions, get feedback from their peers, form virtual communities, engage in social networking;creating an on-line community for registered users to participate in discussions, get feedback from theirpeers, form virtual communities, and engage in social networking services; providing onlineenvironmental information about climate change and bio-diversity; (explain more clearly what is meantby “innovation and technology,” e.g., new product development) . International Class 43Providing online information regarding food, namely, (explain more clearly what is meant by “food,”e.g., reviews of restaurants, recipes and cooking information). 

International Class 44Providing online information and news regarding healthy living and lifestyle wellness, beauty. International Class 45Providing online information in the fields of fashion, lifestyles. An applicant may amend an identification of services only to clarify or limit the services; adding to orbroadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.,1402.07 et seq. For assistance with identifying and classifying services in trademark applications, please see theUSPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual athttp://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.  REQUIREMENTS REGARDING MULTIPLE CLASS APPLICATIONS The application identifies services that are classified in at least eight classes; however, applicant submitteda fee(s) sufficient for only three classes.  In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01. Therefore, applicant must either (1) restrict the application to the number of classes covered by the feesalready paid, or (2) submit the fees for each additional class. For an application with more than one international class, called a “multiple-class application,” anapplicant must meet all the requirements below for those international classes based on an intent to use themark in commerce under Trademark Act Section 1(b): 

(1)        LIST SERVICES BY INTERNATIONAL CLASS:  Applicant must list the servicesby international class.

 (2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submitan application filing fee for each international class of services not covered by the fee(s)already paid (confirm current fee information athttp://www.uspto.gov/trademarks/tm_fee_info.jsp).

 See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01,1403.02(c). INFORMATION ABOUT SERVICES REQUIRED The nature of the services set forth in the application is unclear and additional information is required.  Anapplicant can be required to provide more information if it is necessary for proper examination of theapplication.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re Cheezwhse.com, Inc., 85 USPQ2d1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). Therefore, applicant must submit samples of advertisements or promotional materials for the identifiedservices.  If such materials are not available, then applicant must submit samples of advertisements orpromotional materials for similar services.  In addition, applicant must describe in detail the nature,purpose and channels of trade of the services.

 Failure to respond to a request for information can be grounds for refusing registration.  TMEP §814; seeIn re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d1699, 1701-02 (TTAB 2003).  Merely stating that information about the goods or services is available onapplicant’s website is an inappropriate response to a request for additional information, and is insufficientto make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB2004). DUAL FILING BASES – FOREIGN CERTIFICATE OF REGISTRATION REQUIRED The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim ofpriority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R.§2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though theapplication indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See15 U.S.C. §1126(e). An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certifiedcopy 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, an applicant’s country of origin must be aparty to a convention or treaty relating to trademarks to which the United States is also a party, or mustextend 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 originwhen it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of adocument issued to an applicant by, or certified by, the intellectual property office in applicant’s countryof origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or MadridProtocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocolinternational registration that shows that protection of the international registration has been extended toapplicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an Englishtranslation 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 has not yet issued, or applicant requires additional time to procure a copy of theforeign registration (and English translation, as appropriate), applicant should so inform the trademarkexamining attorney and request that the U.S. application be suspended until a copy of the foreignregistration is available.  TMEP §§716.02(b), 1003.04(b). If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the markbe approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved forpublication on the Section 1(b) basis, it will not register until an acceptable allegation of use has beenfiled.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S.application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant mayretain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided thereis a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(1), (4); TMEP §§806.02(f), 806.04(b).  TRADEMARK COUNSEL Because of the legal technicalities and strict deadlines involved in the USPTO application process,

applicant may wish to hire a private attorney specializing in trademark matters to represent applicant inthis process and provide legal advice.  Although the undersigned trademark examining attorney ispermitted to help an applicant understand the contents of an Office action as well as the applicationprocess in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statementsabout an applicant’s legal rights.   TMEP §§705.02, 709.06.  For attorney referral information, applicant may consult the American Bar Association’s Consumers’Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referralservice of a state or local bar association, or a local telephone directory.  The USPTO may not assist anapplicant in the selection of a private attorney.  37 C.F.R. §2.11. In addition, foreign attorneys, other than authorized Canadian attorneys, are not permitted to representapplicants before the USPTO (e.g., file written communications, authorize an amendment to anapplication, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §§2.17(e),11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are as follows: 

(1)  Attorneys in good standing with a bar of the highest court of any U.S. state, the District ofColumbia, Puerto Rico, and other federal territories and possessions of the United States

 (2)  Canadian agents/attorneys who represent applicants located in Canada and (a) are registeredwith the USPTO and in good standing as patent agents or (b) have been granted reciprocalrecognition by the USPTO

 See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.    

/John Dwyer/Examining AttorneyLaw Office 116571-272-9155John.Dwyer1@uspto.gov

 TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Pleasewait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System(TEAS), to allow for necessary system updates of the application.  For technical assistance with onlineforms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assignedtrademark examining attorney.  E-mail communications will not be accepted as responses to Officeactions; therefore, do not respond to this Office action by e-mail. All informal e-mail communications relevant to this application will be placed in the officialapplication record. WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant orsomeone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all jointapplicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant doesnot miss crucial deadlines or official notices, check the status of the application every three to four monthsusing the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keepa copy of the TSDR status screen.  If the status shows no change for more than six months, contact theTrademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/. TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form athttp://www.uspto.gov/trademarks/teas/correspondence.jsp.  

To: Illumynous Inc. (youranonnews@hush.ai)

Subject: U.S. TRADEMARK APPLICATION NO. 85950059 - YOUR ANONNEWS - N/A

Sent: 10/10/2013 9:04:29 AM

Sent As: ECOM116@USPTO.GOV

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)  

IMPORTANT NOTICE REGARDING YOURU.S. TRADEMARK APPLICATION

 USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/10/2013 FOR U.S. APPLICATION SERIAL NO. 85950059 

Your trademark application has been reviewed.  The trademark examining attorney assigned by theUSPTO to your application has written an official letter to which you must respond.  Please follow thesesteps: (1)  READ THE LETTER by clicking on this link or going to http://tsdr.uspto.gov/, entering your U.S.application serial number, and clicking on “Documents.” The Office action may not be immediately viewable, to allow for necessary system updates of theapplication, but will be available within 24 hours of this e-mail notification.  (2)  RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from10/10/2013, using the Trademark Electronic Application System (TEAS) response form located athttp://www.uspto.gov/trademarks/teas/response_forms.jsp.  Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because theUSPTO does NOT accept e-mails as responses to Office actions.  (3)  QUESTIONS about the contents of the Office action itself should be directed to the trademarkexamining attorney who reviewed your application, identified below.  /John Dwyer/Examining AttorneyLaw Office 116571-272-9155John.Dwyer1@uspto.gov

 

WARNING 

Failure to file the required response by the applicable response deadline will result in theABANDONMENT of your application.  For more information regarding abandonment, seehttp://www.uspto.gov/trademarks/basics/abandon.jsp.  PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Privatecompanies not associated with the USPTO are using information provided in trademark applications tomail or e-mail trademark-related solicitations.  These companies often use names that closely resemble theUSPTO and their solicitations may look like an official government document.  Many solicitations requirethat you pay “fees.”   Please carefully review all correspondence you receive regarding this application to make sure that youare responding to an official document from the USPTO rather than a private company solicitation.  Allofficial USPTO correspondence will be mailed only from the “United States Patent and TrademarkOffice” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information onhow to handle private company solicitations, seehttp://www.uspto.gov/trademarks/solicitation_warnings.jsp.