UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date.  If applicant responds to the issues below within two months of the above mailing or e-mailing  date, this case will be given priority handling.  TMEP §708.01.

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

OFFICE RECORDS SEARCH:  The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number  76/364578

 

The following were discussed in communication with John Holman on February 9, 2006.  Applicant must respond to each refusal and/or requirement raised below.

 

Recitation of Goods and Services

The recitation of services is unacceptable as indefinite.  The applicant may amend the description as follows.  TMEP section 1402.01 and 1402.03.

 

Class 9

“COMPUTER SOFTWARE, NAMELY, FLOPPY DISCS AND CD-ROMS FEATURING TEACHING, TEACHING OF LANGUAGES, UNIVERSITY COURSES, ENTERTAINMENT, SPORTS, AND NEWS PROGRAMMING AND INFORMATION IN THE NATURE OF DOCUMENTARY FILMS, EDUCATIONAL PROGRAMS, TALK SHOWS, SOAP OPERAS, SPORTS AND NEWS PROGRAMMING, AND FINANCIAL AND BUSINESS INFORMATION;” may be amended to:

 

COMPUTER SOFTWARE, NAMELY, FLOPPY DISCS AND CD-ROMS FEATURING, PROGRAMS FOR TEACHING OF LANGUAGES, UNIVERSITY COURSES, ENTERTAINMENT, SPORTS, AND NEWS PROGRAMMING AND INFORMATION IN THE NATURE OF DOCUMENTARY FILMS, EDUCATIONAL PROGRAMS, TALK SHOWS, SOAP OPERAS, SPORTS AND NEWS PROGRAMMING, AND FINANCIAL AND BUSINESS INFORMATION;

 

Class 25

PROTECTIVE FOOTWEAR must be moved to class 9.

 

Class 41

PRODUCTION AND DISTRIBUTION OF MOTION PICTURE FILMS, TELEVISION PROGRAMS IN A VARIETY OF ENTERTAINMENT, NEWS, AND EDUCATIONAL SUBJECTS may be amended to:

 

“PRODUCTION AND DISTRIBUTION OF MOTION PICTURE FILMS AND TELEVISION PROGRAMS IN A VARIETY OF ENTERTAINMENT, NEWS, AND EDUCATIONAL SUBJECTS.”

 

BROADCASTING SERVICES BY SATELLITE TO VIDEO MONITORS LOCATED IN STATIONS, BUSES, AIRPORTS, AND EXHIBITIONS RENDERED LIVE IN STADIUMS AND BY VOICE AND VIDEO TRANSMISSIONS; may be amended to:

 

CLASS 38--TELEVISION AND VIDEO BROADCASTING BY SATELLITE TO VIDEO MONITORS LOCATED IN STATIONS, BUSES, AIRPORTS, AND TELEVISION AND VIDEO BROADCASTING BY SATELLITE OF EXHIBITIONS RENDERED LIVE IN STADIUMS.”  Note that the correct class for this services is 38 rather than 41.

 

“PROVIDING FACILITIES FOR SPORTS COMPETITIONS AND EXHIBITIONS FOR MUSICAL CONCERTS AND OTHER ENTERTAINMENT EVENTS;”  be accepted because the wording refers to services that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of services may be amended to clarify or limit the services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

 

 

For the applicant's convenience, the Trademark Acceptable Identification of Goods and Services Manual on the internet at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ offers a searchable list of acceptable identifications and classifications.  When formulating and classifying identifications the Manual is a useful resource and guide, but it is not an exhaustive list of every acceptable identification. 

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Daniel Capshaw/

Trademark Attorney

Law Office 110

571.272.9356

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm