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 76/543252

 

The assigned trademark examining attorney has reviewed the referenced application filed on September 8, 2003, and has determined the following.

 

Search Results

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.

 

Disclaimer

Applicant must disclaim the descriptive wording “TV GUIDE” and “PLATFORM” apart from the mark as shown because it merely describes the type of informational programming and entertainment services provided by applicant and that the software, communications and entertainment services are provided using an underlying software and/or hardware platform.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  Please note that attached definition of the term “platform”. 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “TV GUIDE” and “PLATFORM” apart from the mark as shown.

 

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

 

Distinctiveness under Section 2(f)

Applicant may claim the benefit of Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness of the phrase “TV GUIDE” through ownership of U.S. Registration Nos.  2551543, 2554596 and 2596584.  37 C.F.R. §2.41(b); TMEP §1212.02(f).  To do so, applicant must submit the following statement, if accurate:

 

The wording “TV GUIDE” in the mark has become distinctive of the services as evidenced by ownership of U.S. Registration Nos. 2551543, 2554596 and 2596584 on the Principal Register for the same mark for related services.  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

NOTE:  Should applicant claim acquired distinctiveness as to the phrase “TV GUIDE”, the disclaimer discussed above should be limited to the term “PLATFORM”. 

 

Ownership Claim as to Pending Applications

Applicant’s claim of ownership of Application Serial Nos. 75/689570, 75/689555, 76/243257, 76/384994, 76/507930, and 76/519761 will not be printed on any registration that may issue from this application because only claims of ownership of pertinent live registrations are printed.  If the claimed applications that remain pending register before this application, then applicant may claim ownership of them by registration numbers.  37 C.F.R. §2.36; TMEP §812.

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Examining Attorney

Law Office 113

(703) 285-1184; FAX (703) 746-6228

(703) 308-9113 ext. 480 (Thurs.)

 

 

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 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.