UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/324223
APPLICANT: EMAP Consumer Media Limited
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CORRESPONDENT ADDRESS: RICHARD M. GOLDBERG 25 E SALEM ST HACKENSACK NJ 07601-7427
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
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MARK: HEAT
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CORRESPONDENT’S REFERENCE/DOCKET NO: 231/3/103
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/324223
NOTICE OF SUSPENSION
Action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant's country of origin. If the registration is in a foreign language, an English translation must be submitted. The true copy, photocopy, certification, or certified copy of the registration should be forwarded to the Examining Attorney as soon as possible. If the foreign application is abandoned, the Examining Attorney should be advised.
Applicant’s amended services are noted. Registrations 1485606 and 2524977 are withdrawn as bars to this application based upon the restricted claim.
Regarding Reg. nos. 2223618 and 2557970 applicant asserts that the term “heat” is diluted such that small differences in the marks will avoid confusion; that registrant’s online gaming site is stopping its activity and abandoning its use of the term; that online computer and video games are different from applicant’s TV, radio and publishing services; and that applicant’s subject matter will be that same as its magazine and therefore different from registrant’s subject matter.
Applicant’s arguments are not well taken. The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), that the registrant is the owner of the mark, extends to all goods/services identified in the registration. The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980).
It is an impermissible collateral attack upon the registrations to assert abandonment in the exparte context. The proper forum for such an assertion is before the Trademark Trial and Appeal Board in a cancellation proceeding wherein the registrant will have an opportunity to be heard.
Registrant’s subject matter is not limited to games but also claims “audio-visual works for purposes of entertainment”, computer databases in the fields of “entertainment”, “music”, and “education”. Registrant’s chat rooms concern the “entertainment field” and its on-line computer database service covers “online entertainment services”. Its website offers news and information “of interest to the general public”.
Applicant’s claim is not limited to the subject matter of its magazine, “namely, relating to celebrities and their lifestyles, together with information relating to on-going television programs, television and film reviews.”
The Section 2(d) refusal is continued.
/G. Mayerschoff/
Trademark Attorney, LO-106
Hrs. 8:30 am- 6pm
703- 308- 9106 x118
Fax- 703- 746-8106
ecom106@uspto.gov