UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/501606

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because it is not clear what applicant mean by “deejay mixes.  Is applicant referring to deejay audio mixers?  Also the jubject matter of  several of the goods is not clear.  The applicant may adopt the following identification, if accurate:  MUSICAL AND SOUND RECORDINGS, NAMELY COMPACT DISCS, AUDIO TAPES, CASSETTE TAPES,AND AUDIOTAPES FEATURING MUSIC, COMPACT DISCS FEATURING MUSIC, PRERECORDED AUDIO CASSETTES FEATURING MUSIC, AUDIOTAPES FEATURING MUSICAL ENTERTAINMENT BY A DISC JOCKEY, COMPACT DISCS FEATURING MUSICAL ENTERTAINMENT BY A  DISC JOCKEY, PRERECORDED AUDIO CASSETTES FEATURING MUSICAL ENTERTAINMENT BY A  DISC JOCKEY, MUSICAL RECORDINGS FEATURING A DISC JOCKEY, MUSICAL SOUND RECORDINGS FEATURING A DEEJAY, DEEJAY AUDI MIXERS, INT. Cl. 9.  TMEP §1402.01.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Recitation of Services

 

The recitation of services is unacceptable as indefinite because the nature f the radio musical entertainment services are not clear.  The applicant may adopt the following recitation, if accurate:  ENTERTAINMENT SERVICES, NAMELY MUSICAL ENTERTAINMENT SERVICES OF A DISC JOCKEY, PRODUCTION AND REMIXING OF MUSICAL RECORDINGS, ORGANIZING CONCERTS FEATURING LIVE MUSIC, PERSONAL APPEARANCES BY A DISC JOCKEY AT PARTIES, NIGHTCLUBS, CONCERTS, AND SPECIAL EVENTS, ENTERTAINMENT SERVICES, NAMELY, FEATURING RADIO PROGRAMS IN THE FIELD OF MUSIC, RADIO PROGRAMS FEATURING PERFORMANCES BY A RADIO PERSONALITY, DISCHOTEQUE SERVICES, DANCE CLUB SERVICES, PRODUCTION OF RADIO PROGRAMS, RECORDING STUDIO SERVICES, ARRANGING AND CONDUCTING OF CONFERENCES RELATING TO MUSIC, ORGANIZATION OF MUSICAL EVENTS, ORGANIZATION OF RECREATIONAL EVENTS IN THE NATURE OF DANCING, DJ'ING, AND SINGING, MUSICAL ENTERTAINMENT AT CASINOS, AT CARNIVALS, AT DANCES, AT CINEMAS, AT TALENT SHOWS, AT COMEDY SHOWS, AND AT FASHION SHOWS, CONCERT BOOKING, LIVE MUSIC CONCERTS, EMCEEING FEATURING MUSIC, DISC JOCKEY SERVICES, PRODUCTION OF MUSICAL AUDIOTAPES AND COMPACT DISCS, AND PRODUCTION OF RECORDINGS FEATURING MUSIC, INT. CL. 41.  TMEP §1402.11.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Name of an Individual

 

Is the designation DJ CHANCE the name of a particular living individual?  If the name shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name.  If the name does not identify a living individual, the applicant should state so for the record.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.

 

 

Significance of the mark

 

The applicant must indicate whether the wording “CHANCE” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

 

Section 2(f) (claim)

 

The applicant has submitted a voluntary 2f claim.  It is not clear why applicant has submitted a claim of acquired distinctiveness under §2(f). The wording “CHANCE” appears to be distinctive and can carry the mark.  However, if the applicant wishes, a claim of acquired distinctiveness under §2(f) may be made as to an entire mark or phrase that contains both inherently distinctive matter and matter that is not inherently distinctive.  In re Del E. Webb Corp., 16 USPQ2d 1232, 1234 (TTAB 1990).  The applicant should indicate for the record whether applicant wishes to maintain the 2F claim. TMEP section 12.02(d).

 

 

Disclaimer

 

The applicant must disclaim the descriptive wording “DJ” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it describes a feature of the goods/services. The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because the designation is generic.  In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).

 

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use DJ apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

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

 

/Priscilla Milton/

Examining Attorney

Law Office 110

Priscilla.Milton@uspto.gov (for informal questions)

(703) 308-9110 Ext. 423

ecom110@uspt.gov (for Formal responses only)

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.