To: Subject: Sent: Sent As:
ImageShack Corporation (email@example.com) U.S. TRADEMARK APPLICATION NO. 77811096 - TWITPIC - N/A 10/21/2009 3:11:57 PM ECOM115@USPTO.GOV
Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: MARK: TWITPIC CORRESPONDENT ADDRESS: IMAGESHACK CORPORATION IMAGESHACK CORPORATION 236 N SANTA CRUZ AVE STE 100 LOS GATOS, CA 95030-7267 77/811096
RESPOND TO THIS ACTION: http://www.uspto.gov/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION:
APPLICANT: ImageShack Corporation
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A CORRESPONDENT E-MAIL ADDRESS: firstname.lastname@example.org
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE. ISSUE/MAILING DATE: 10/21/2009 This Office action supersedes any previous Office action issued in connection with this application. The noted registrations failed to attach to the previous Office Action. Therefore, this action, with
properly attached registrations, supersedes the previous Action. 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 Pending Applications The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark. The filing dates of pending Application Serial Nos. 77728844 and 77742689 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). 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 marks in the referenced applications. 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. Specimen The specimen is not acceptable because the applied-for mark, TWITPIC, does not appear anywhere on the specimen. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Therefore, applicant must submit the following: (1) A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application; and (2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. 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. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq. If applicant cannot satisfy the above requirements, applicant may amend the application from a use in
commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. 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. 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, 2.33: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 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). Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Response Guidelines Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved. The Office, however, cannot aid in the selection of an attorney. 37 C.F.R. §2.11. Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service. There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.uspto.gov/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a). Applicant must explicitly address each issue raised in this Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn. To respond to requirements, applicant should set forth in writing the required changes or statements. The response must be signed by the individual applicant or by a person with legal authority to bind a juristic applicant (e.g., a corporate officer, the equivalent of an officer for unincorporated organizations or limited liability companies, a general partner). See TMEP §§611.03(b), 611.06 et seq., 712.01. In the case of joint applicants, all should sign. TMEP §611.06(a). The proper signatory must personally sign or manually enter his/her electronic signature. TMEP §§611.01(b), 611.02. TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must submit certain documents electronically. In addition, such applicants must accept correspondence from
the Office via e-mail throughout the examination process and maintain a valid e-mail address. 37 C.F.R. §§2.23(a), (b); TMEP §§819, 819.02(a), (b). Failure to do so will incur an additional fee of $50 per class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. Therefore, applicant must submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html: (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of power of attorney; (6) appointments and revocations of domestic representative; (7) amendments to allege use; (8) statements of use; (9) requests for extension of time to file a statement of use; and (10) requests to delete a Trademark Act Section 1(b) basis. If applicant files any of these documents on paper instead of via TEAS, then applicant must also submit the $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv), 2.23(a)(1); TMEP §§819.02(b), 819.04. Telephone responses that result in the issuance of an examiner’s amendment will not incur this additional fee.
/Matt Einstein/ Matt Einstein Trademark Examining Attorney Law Office 115 Phone: (571) 272-8251
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses. If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.
To: Subject: Sent: Sent As: Attachments:
ImageShack Corporation (email@example.com) U.S. TRADEMARK APPLICATION NO. 77811096 - TWITPIC - N/A 10/21/2009 3:12:03 PM ECOM115@USPTO.GOV
IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION
Your trademark application (Serial No. 77811096) has been reviewed. The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 10/21/2009 to which you must respond (unless the Office letter specifically states that no response is required ). Please follow these steps:
1. Read the Office letter by clicking on this link http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77811096&doc_type=OOA&mail_date OR go to http://tmportal.uspto.gov/external/portal/tow and enter your serial number to access the Office letter. If you have difficulty accessing the Office letter, contact TDR@uspto.gov. PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.
2. Contact the examining attorney who reviewed your application if you have any questions about the
content of the Office letter (contact information appears at the end thereof). 3. Respond within 6 months, calculated from 10/21/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you
have difficulty using TEAS, contact TEAS@uspto.gov.
Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application. Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.
PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2008)
Trademark/Service Mark Application, Principal Register TEAS Plus Application
Serial Number: 77811096 Filing Date: 08/24/2009 NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory under the facts of the particular application.
The table below presents the data as entered.
Input Field TEAS Plus MARK INFORMATION
*MARK *STANDARD CHARACTERS USPTO-GENERATED IMAGE LITERAL ELEMENT
twitpic YES YES twitpic The mark consists of standard characters, without claim to any particular font, style, size, or color. Principal
REGISTER APPLICANT INFORMATION
*OWNER OF MARK *STREET *CITY *STATE (Required for U.S. applicants) *COUNTRY *ZIP/POSTAL CODE (Required for U.S. applicants only)
ImageShack Corporation 236 North Santa Cruz #100 Los Gatos California United States 95030
EMAIL ADDRESS AUTHORIZED TO COMMUNICATE VIA EMAIL
LEGAL ENTITY INFORMATION
*TYPE * STATE/COUNTRY OF INCORPORATION
GOODS AND/OR SERVICES AND BASIS INFORMATION
042 Providing a web site that gives computer users the ability to upload, exchange and share photos, videos and video logs SECTION 1(a) At least as early as 09/01/2008 At least as early as 02/01/2009 \\TICRS\EXPORT7\IMAGEOUT7 \778\110\77811096\xml1\FT K0003.JPG yfrog logo and tagline.
*FILING BASIS FIRST USE ANYWHERE DATE FIRST USE IN COMMERCE DATE SPECIMEN FILE NAME(S) SPECIMEN DESCRIPTION
ADDITIONAL STATEMENTS INFORMATION
*TRANSLATION (if applicable) *TRANSLITERATION (if applicable) *CLAIMED PRIOR REGISTRATION (if applicable) *CONSENT (NAME/LIKENESS) (if applicable) *CONCURRENT USE CLAIM (if applicable)
*NAME FIRM NAME *STREET *CITY
ImageShack Corporation ImageShack Corporation 236 North Santa Cruz #100 Los Gatos
*STATE (Required for U.S. applicants) *COUNTRY *ZIP/POSTAL CODE *EMAIL ADDRESS *AUTHORIZED TO COMMUNICATE VIA EMAIL
California United States 95030 firstname.lastname@example.org Yes
NUMBER OF CLASSES FEE PER CLASS *TOTAL FEE PAID
1 275 275
* SIGNATURE * SIGNATORY'S NAME * SIGNATORY'S POSITION * DATE SIGNED
/Mike Harkey/ Mike Harkey Business Development 08/24/2009
PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2008)
Trademark/Service Mark Application, Principal Register TEAS Plus Application
Serial Number: 77811096 Filing Date: 08/24/2009
To the Commissioner for Trademarks:
MARK: twitpic (Standard Characters, see mark) The literal element of the mark consists of twitpic. The mark consists of standard characters, without claim to any particular font, style, size, or color. The applicant, ImageShack Corporation, a corporation of Delaware, having an address of
236 North Santa Cruz #100 Los Gatos, California 95030 United States requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following: For specific filing basis information for each item, you must view the display within the Input Table. International Class 042: Providing a web site that gives computer users the ability to upload, exchange and share photos, videos and video logs Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. In International Class 042, the mark was first used at least as early as 09/01/2008, and first used in commerce at least as early as 02/01/2009, and is now in use in such commerce. The applicant is submitting one specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n) yfrog logo and tagline.. Specimen File1 Correspondence Information: ImageShack Corporation 236 North Santa Cruz #100 Los Gatos, California 95030 email@example.com (authorized) A fee payment in the amount of $275 has been submitted with the application, representing payment for 1 class(es). Declaration The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true. Signature: /Mike Harkey/ Date Signed: 08/24/2009 Signatory's Name: Mike Harkey
Signatory's Position: Business Development
RAM Sale Number: 7126 RAM Accounting Date: 08/24/2009 Serial Number: 77811096 Internet Transmission Date: Mon Aug 24 12:42:10 EDT 2009 TEAS Stamp: USPTO/FTK-188.8.131.52-2009082412421084 6578-77811096-40019c6bf3175a6565a7527d21 4f881ca1-CC-7126-20090824122214477199