UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/583449
APPLICANT: N T Audio Visual Supply, Inc.
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CORRESPONDENT ADDRESS: JEFFER, MANGELS, BUTLER & MARMARO LLP 1900 AVENUE OF THE STARS, 7TH FLOOR |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: NT
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CORRESPONDENT’S REFERENCE/DOCKET NO: 64117-1001
CORRESPONDENT EMAIL ADDRESS: |
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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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.
Serial Number 76/583449
PLEASE NOTE: After the applicant’s review of the below requirements, applicant is encouraged to telephone the trademark examining attorney to resolve the issues raised and expedite prosecution of this application.
The following were discussed with BERNARD R. GANS on May 9, 2005 in response to the applicant’s communication received on April 21, 2005.
In the applicant’s communication received on April 21, 2005, the applicant (1) amended the identification of services; (2) paid an additional fee for two classes of services; (3) and asserted that the wording in the mark has no significance in the applicant’s trade and industry. Nos. (2) and (3) are acceptable. No. (1) is not acceptable.
For the reasons set forth below, the requirement for an acceptable identification of services is now made FINAL. 37 C.F.R. §2.64(a).
In the previous Office action, the applicant was required to submit an acceptable identification of services because the recitation in the original application was unacceptable as indefinite and included items properly classified in more than one international class. TMEP §1402.11.
The examining attorney has reviewed the applicant’s amended identification of services but has found the amendment unacceptable in part For the reasons set forth below, the requirement for an acceptable identification of services is maintained and made FINAL.
THIS REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN, NAMELY, “RENTAL OF EDITING ROOMS AND SCREENING ROOMS,” “DIGITAL RECORDING SERVICES FOR OTHERS,” “RENTAL OF EDITING SUITES,” “FILM COUNTDOWN LEADER FOR THE INITIAL THREADUP OF REALS, PLATTERS AND INTERLOCKS, AND LEADER FOR USE BETWEEN TRAILERS AND DURING INTERMISSIONS,” “DEVELOPING OF MOTION PICTURE FILM,” “PROVIDING POST PRODUCTION SERVICES IN THE FIELDS OF QUALITY CONTROL OF AUDIO CONTENT,” “DVD CONFORMING,” “AUDIO PREPARATION” AND “AUDIO, EDITORIAL AND VIDEO QUALITY CONTROL SERVICES”
The wording “rental of editing rooms and screening rooms” needs clarification to identify that the rooms are “film editing and film screening rooms.” The wording “digital recording services for others” needs clarification to indicate the type of media recorded, e.g., audio. The wording “rental of editing suites” needs clarification to indicate the use of the suites, e.g., for screening motion picture films. The wording “film countdown leader for the initial threadup of reals, platters and interlocks, and leader for use between trailers and during intermissions” is unclear as worded. As discussed with the applicant, applicant may change this wording to “production of film countdown leaders for the initial thread-up of reels, platters and interlocks, and leaders for use between trailers and during intermissions of motion picture films,” if accurate. TMEP §1402.01.
The applicant must amend the identification of services to classify “developing of motion picture film” in class 40 and “providing post production services in the fields of quality control of audio content” in class 42. The applicant must also clarify the wording and “providing post production services in the fields of quality control of audio content” by specifying that the services are provided for others and to further clarify the field or industry, e.g., the motion picture, film and television industries.
The applicant must clarify the nature of its “DVD conforming” services. Applicant may change this wording to “editing and production of DVDs conforming to industry standards,” and reclassify the services in class 41. The applicant must clarify the nature of its “audio preparation” services. If the “audio preparation” is in the nature of audio production, the applicant may change this wording to “audio production services for others” and reclassify the services in class 41. Lastly, the applicant must specify that its “audio, editorial and video quality control services” are provided for others.
Applicant may adopt the following identification of services, if accurate:
Color and black and white audiovisual media duplicating; audiovisual media analog and digital transferring; television to cinema transferring; transferring audiovisual content to different audiovisual media; audio and video restoration; developing of motion picture film.
Class 41
Post production services in the motion picture, film and television industries; optical soundtrack recording; rental of mixing and sound stages, film editing rooms and film screening rooms; audio and video dubbing services; digital audio recording services for others; rental of editing suites for screening motion picture films; production of film countdown leaders for the initial thread-up of reels, platters and interlocks, and leaders for use between trailers and during intermissions of motion picture films; editing and production of DVDs conforming to industry standards; audio production services.
Class 42
Post production services, namely quality control for others in the fields of audio and video content, duplicating and transfer of audiovisual media; audio, editorial and video quality control services for others; providing post production audio quality control for others in the motion picture, film and television industries.
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.
The trademark examining attorney examines identifications of goods and/or services for acceptability in accordance with the Rules of Practice in Trademark Cases and USPTO policies and procedures in effect at the time registration is sought. Descriptions of goods and/or services found in earlier-filed applications and registrations are not always determinative on the issue of acceptability of such identifications in the present time. For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm/html, which is frequently updated in accordance with prevailing rules and policies. See TMEP §§702.03(a)(iv) and 1402.04.
Based on the foregoing, the requirement for an acceptable identification of services is continued and made FINAL.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If applicant should fail to respond to this Office action within the six month time limit, then the following services will be deleted from the application: “rental of editing rooms and screening rooms,” “digital recording services for others,” “rental of editing suites,” film countdown leader for the initial threadup of reals, platters and interlocks, and leader for use between trailers and during intermissions,” “developing of motion picture film,” “providing post production services in the fields of quality control of audio content,” “DVD conforming,” “audio preparation” and “audio, editorial and video quality control services.”
The application will then proceed forward for the following services only:
“Color and black and white audiovisual media duplicating; audiovisual media analog and digital transferring; television to cinema transferring; transferring audiovisual content to different audiovisual media; audio and video restoration,” in International Class 40;
“Post production services in the motion picture, film and television industries; optical soundtrack recording; rental of mixing and sound stages; audio and video dubbing services,” in International Class 41; and
“Post production services, namely quality control for others in the fields of audio and video content, duplicating and transfer of audiovisual media,” in International Class 42.
37 C.F.R. §2.65(a).
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Daniel Brody/
Trademark Examining Attorney
Law Office 115
U.S. Patent and Trademark Office
(571) 272-9724
HOW TO RESPOND TO THIS OFFICE ACTION:
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
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.