UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/16/2013

 

THIS IS A FINAL ACTION.

 

 

This letter responds to applicant’s communication, filed in this Office on June 27, 2013, in which applicant amended the identification of services.

 

The examining attorney has reviewed the amended identification, and finds that it is acceptable except for one specific section that remains indefinite and, as amended, now also exceeds the original scope of the identification.

 

Accordingly, for the reasons discussed in more detail below, the requirement for an acceptable identification of services is hereby made final with regard to the wording “sports and entertainment rendered live and through broadcast media including television and radio, and via the internet or commercial online service.”

 

Please note that this issue may be resolved in an expedited manner by contacting the examining attorney.

 

 

Identification of Services – Further Amendment Required

 

The original identification of services listed a number of sports and entertainment services in Class 41.  In the initial Office action, the examining attorney required that applicant clarify the identification with regard to various sections, and provided suggestions for acceptable wording based on this Office’s identification manual and/or on wording in applicant’s companion cases that have been published or registered.

 

Applicant has responded with an amended identification that is largely acceptable, but which must be further amended to clarify one section that remains indefinite.

 

Specifically, the original identification included the following section:  “sports entertainment rendered live and through broadcast media including television and radio, and via the internet or commercial online service.”  In the initial Office action, the examining attorney discussed the fact that the reference to “sports entertainment” is indefinite and must be amended to specify the particular types of events.  The examining attorney suggested that applicant amend the beginning phrase to “sports entertainment, namely wrestling events” in keeping with wording in a companion application (Serial No. 85538681 for the mark WRESTLEMANIA, now registered as U.S. Reg. No. 4285112).  See the attached copy of this registration.  The examining attorney also noted that applicant could specify another similar clarifying phrase such as “namely football events” if more accurate for the services that will be provided under the applied-for mark.

 

Applicant’s response amended this section to read as follows:  “sports and entertainment rendered live and through broadcast media including television and radio, and via the internet or commercial online service.”  The amended wording thus inserts the term “and” between the first two terms, but does not otherwise clarify the specific types of events.

 

The examining attorney finds that this amendment is unacceptable because the wording is still indefinite and because it exceeds the scope of the original identification – with the addition of the term “and” functioning to create two separate categories and thus expanding the possible types of events to include non-sports entertainment.  While an applicant may clarify or limit the identification of goods and/or services, adding to or broadening the scope is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

In order to fully resolve the identification issue, applicant must therefore submit a further amendment of this specific section.  The reference to “sports entertainment” (as stated in the original identification) is indefinite because it does not identify with sufficient clarity the nature of the sports-related entertainment, which could range from wrestling competitions and/or football games to such diverse events such as fishing exhibitions and bowling competitions.

 

In this regard, applicant is encouraged to consult this Office’s identification manual, which provides numerous examples of acceptable wording for entertainment services.  While certain types of services can be identified by simply referring to “in the field of sports” or “in the field of entertainment” (some of which applicant has included in the identification – e.g., “providing a website in the field of sports entertainment”), the provision of entertainment events must be identified by specifying the particular types of events.  For example, the identification manual includes the following entries:

 

            Entertainment in the nature of air shows

            Entertainment in the nature of automobile races

            Entertainment in the nature of ballet performances

            Entertainment in the nature of baseball games

            Entertainment in the nature of beauty pageants

            Entertainment in the nature of circuses

Entertainment in the nature of competitions in the field of [indicate field, e.g., athletics,        spelling][1]

Entertainment in the nature of [indicate specific event or act, and field, e.g., musical group, television comedy series, ethnic festival]

            Entertainment in the nature of [indicate specific sport] games

 

These are only a few examples of a large number of entries that require that the specific nature of the events/activities (and not simply an indication of the general field) be indicated.  Again, such clarity is required with respect to these types of services because of the extremely large range of activities that would be encompassed by “entertainment” or even “sports entertainment.”

 

Applicant is encouraged to consult the identification manual for additional assistance in determining acceptable wording for this portion of the identification.  As indicated previously, amending to specify “sports entertainment, namely wrestling events [or “namely football events”] rendered live and through broadcast media including television and radio, and via the internet or commercial online service” would be acceptably definite and would fully resolve this issue.

 

Please also note that applicant’s companion application for the mark WWE INSIDER (Serial No. 85788235) involves a similar identification issue, although with a slightly different amendment having been provided in applicant’s response.  

 

Pending a response from applicant resolving this issue, the requirement for an acceptable identification of services is made final as to the above-discussed section of the identification.

 

 

Options After Final Refusal / Partial Abandonment If No Response Filed

 

The above issue applies only to one specific section within the overall identification of services.  Accordingly, if applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application:  “sports and entertainment rendered live and through broadcast media including television and radio, and via the internet or commercial online service.”  The application will then proceed with the remaining services in the identification.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Elizabeth A. Hughitt/

 

Examining Attorney

Law Office 111

U.S. Patent and Trademark Office

571 272 9384

beth.hughitt@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 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 online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; 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 official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  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 does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.