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: 2/18/2014

 

 

On July 16, 2013, the examining attorney issued a final action concerning a particular section of the identification of services, and indicated that if no response were filed within the six-month response period, the identification would be amended to delete the unacceptable section (partially abandoning that portion of the application), and the application would then be approved for publication with regard to the remainder of the identification.

 

No response to the partial final action was received.  However, in reviewing the application prior to issuing the partial abandonment, the examining attorney noted that the identification includes another section that has recently been brought to the attention of examining attorneys handling applicant’s Class 41 applications.  This examining attorney very recently issued an Office action concerning this issue in applicant’s TENSAI application (Serial No. 85763461), and the same issue is presented in this present application in connection with the first section of the identification.

 

Accordingly, rather than issue a partial abandonment to delete the identification section referenced in the final action, this new non-final action is now issued in order to raise the new identification issue with regard to the first section of the current identification.  This new issue also relates to the other section of the identification that was discussed in the final action – with the same phrase being unacceptable in that other section.  Both sections are thus discussed below, and if applicant chooses to respond to this issue, applicant must follow the guidance below in order to properly resolve both sections of the identification. 

 

 

Identification of Services – Further Amendment Required

 

Applicant has identified various entertainment services in Class 41.  In the initial Office action, the examining attorney required clarification as to particular sections of the identification, and subsequently issued a final action solely with regard to one specific section that was still unacceptable.  That section read as follows:  “sports and entertainment rendered live and through broadcast media including television and radio, and via the internet or commercial online service.”  In the final action, the examining attorney discussed the fact that the phrase “sports and entertainment” did not describe the nature of the services with sufficient specificity, and also exceeded the scope of the original wording for this section.  Please note, however, that this section must now be considered unacceptable for an additional reason, as it contains the same phrase “and through broadcast media . . .” discussed below.  It must therefore be amended in a similar manner (in addition to clarifying the specific types of sports entertainment), or else deleted.

 

As indicated above in the introduction to this letter, it has recently come to the examining attorney’s attention that the first section in the identification, which identifies exhibition/performance services, is considered indefinite in part.  While this wording was previously accepted in some of applicant’s applications, the Office’s Identification and Classification Department has indicated that the wording is not acceptable and must be amended to clarify the nature of the services.  In this regard, applicant is referred to the Office action issued in its companion application for the mark ZEB COLTER (Serial No. 86086152), which correctly requires clarification as to this part of the identification.

 

The wording at issue is the first section in the identification, which currently reads as follows:  “Entertainment services, namely, wrestling exhibitions and performances by professional wrestlers and entertainers rendered live and through broadcast media including television and radio, and via the internet or commercial online service.”

 

This wording is acceptable as to the first half – i.e., “wrestling exhibitions and performances by professional wrestlers and entertainers rendered live.”  This Office considers performance services to be acceptable as a real service as long as they are stated as being live.  See the various entries in this Office’s identification manual for performance services, with at least one of the entries including a bracketed explanatory note specifying the requirement that the performances be live in nature.  This first part of the wording is thus acceptable as written.

 

However, the remaining phrase – “and through broadcast media including television and radio, and via the internet or commercial online service” – is considered indefinite because it is not a live performance, and thus appears to be identifying a separate content-providing service, which must be identified as being in the nature of providing an ongoing show, series or program via the specified broadcast media.  See the various entries in this Office’s identification manual for these types of services.

 

Accordingly, applicant may amend to the following, if accurate for these services:

 

Entertainment services, namely, wrestling exhibitions and performances by professional wrestlers and entertainers rendered live; entertainment services, namely, an ongoing series featuring wrestling exhibitions and performances by professional wrestlers and entertainers provided through broadcast media, namely, television and radio, and via the internet or commercial online service

 

And as noted above, this requirement also applies to the section that was discussed in the final action, because that section contains the same reference to broadcast media.  Applicant may amend that section to read as follows, if accurate:

 

Sports entertainment, namely, wrestling events [to clarify the types of events, as discussed in the previous final action] rendered live; sports entertainment, namely, an ongoing series featuring wrestling events provided through broadcast media, namely, television and radio, and via the internet or commercial online service

 

Finally, please note that identifications of services may be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

 

 

Partial Abandonment If No Response Filed

 

The identification issue pertains only to two specific sections of the identification (one discussed for the first time above, and the other discussed in the previously issued final action).  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:  (1) in the first section, the wording after the phrase “rendered live” (“and through broadcast media including television and radio, and via the internet or commercial online service”); and (2) the section “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).

 

 

 

 

 

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.

 

Please note:  The above issue may be resolved by an Examiner’s Amendment, and the applicant is encouraged to telephone or email the examining attorney to expedite processing of this application.

 

/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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/18/2014 FOR U.S. APPLICATION SERIAL NO. 85720169

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/18/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.