To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Shawn Mendes (fbhatti@buchalter.com)
`
`U.S. Trademark Application Serial No. 90354448 - PERMANENT CONTENT - C1886-5022
`
`January 04, 2022 05:42:10 PM
`
`ecom113@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application
`Serial No. 90354448
`
`Mark:  
`PERMANENT
`CONTENT
`
`Correspondence
`
`Address:   
`
`     
`         
`   
`
`     Farah P. Bhatti
`     BUCHALTER, A
`  
`PROFESSIONAL
`CORPORATION
`         18400 VON
`KARMAN AVE.,
`SUITE 800
`         IRVINE, CA
`92612
`  
`Applicant:   Shawn
`Mendes
`
`    
`
`Reference/Docket
`No. C1886-5022
`
`Correspondence
`
`Email Address:    
`
`   
`fbhatti@buchalter.com
`
`SUSPENSION NOTICE
`No Response Required
`
`Issue date:   January 04, 2022
`
`Pursuant to TMEP §716.01, applicant is advised of the following status of the application.  In an Office action issued on June 3, 2021, the
`following issues were outstanding with this application:
`
`(1)   Identification of Services Indefinite and Overly Broad – Amendment Required;
`(2)   Clarification Of The Number Of Classes For Which Registration Is Sought Required;
`(3)   Advisory – Multiple Class Application Requirements For Applications Based On Section 44;
`(4)   Disclaimer Required;
`(5)   Applicant’s Domicile Address Required; and
`(6)   Copy of Foreign Registration Required.
`
`On July 8, 2021 applicant filed a Change Address or Representation Form and on November 15, 2021, applicant responded to the Office action.
`The trademark examining attorney has thoroughly reviewed applicant’s response and has determined the following:
`
` 
` 
` 
` 
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`

`

`(1)   Applicant’s amendment to the identification of services is not acceptable because it still includes broad wording. Accordingly, the
`Identification Requirement and Clarification of Number of Classes Requirement are both maintained and continued;
`(2)   Applicant’s arguments against the Disclaimer Requirement are not persuasive and the Disclaimer Requirement is maintained and
`continued;
`(3)   The domicile address provided appears to be a commercial address, however, applicant is identified as an individual. A commercial or
`business address is not acceptable for an individual applicant, and therefore, the Domicile Address Requirement is maintained and
`continued; and
`(4)   Applicant did not provide a copy of the foreign registration. The Copy of Foreign Registration Requirement is maintained and continued
`and the application is suspended pending submission of a copy of a foreign registration from applicant’s country of origin.
`
`Preliminary Response to Applicant’s Arguments
`
`Applicant argues that a disclaimer of the term CONTENT in the applied-for mark is not required. First, the mark is not unitary and the dictionary
`evidence of record establishes the descriptive meaning of the term in connection with applicant’s identified entertainment services. Furthermore,
`the descriptiveness of the term is supported by applicant’s own use of the term in the identification of services. Specifically, applicant describes
`applicant’s services as “distribution via the Internet of downloadable and non-downloadable digital media content …” Moreover, there are
`several similarity structured marks for use in connection with entertainment and distribution services in Class 41 where the term CONTENT is
`disclaimed.
`
`APPLICATION SUSPENDED
`
`The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.  
`
`Application suspended until submission of foreign registration or proof that foreign registration was renewed.  Applicant is required to
`provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration
`issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO
`receives a copy of such foreign registration or proof that the foreign registration was renewed.  TMEP §§716.02(b), 1003.04.  Applicant must
`
`also provide an English translation if the foreign registration or renewal document is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii).  
`
`If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining
`attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and
`will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).
`
`Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As
`needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP
`
`§716.05.  
`No response required.  Applicant may file a response, but is not required to do so.   
`
`/Danielle L. Anderson/
`Danielle L. Anderson
`Trademark Examining Attorney
`Law Office 113, USPTO
`571-272-6143
`danielle.anderson@uspto.gov
`
`    
`
` 
` 
` 
` 
` 
` 
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Shawn Mendes (fbhatti@buchalter.com)
`
`U.S. Trademark Application Serial No. 90354448 - PERMANENT CONTENT - C1886-5022
`
`January 04, 2022 05:42:12 PM
`
`ecom113@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on January 04, 2022 for
`U.S. Trademark Application Serial No. 90354448
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You may be required to
`respond to this Office action.  Follow the steps below.
`
`(1)   Read the Office action HERE.  This email is NOT the Office action.
`
`(2)  Respond to the Office action, if a response is required.  Respond 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 misleading notices sent by private companies about your application.  Private companies not associated with
`the USPTO may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only
`email official USPTO correspondence from the domain “@uspto.gov.”
`
`·         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 identified above is not your attorney and cannot give you legal advice, but rather
`works for and represents the USPTO in trademark matters.
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