Offc Action Outgoing

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  76/620492

 

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

 

PRIOR PENDING APPLICATION:

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78514023.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Action on this application will be suspended pending the disposition of Application Serial No. 78514023, upon receipt of the applicant's response resolving the following informalities.

SPECIAL FORM DRAWING:

 

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because it contains gray and it will not reproduce satisfactorily.  TMEP §807.07(a).

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

IDENTIFICATION OF GOODS AND CLASSIFICATION:

 

The identification of goods is unacceptable as indefinite because wording is vague and overly broad.  The applicant may adopt the following identification, if accurate: 

 

Motion picture films featuring _______ (the applicant must specify the subject matter, for instance, comedy, drama, musicals, action, adventure, suspense); television films featuring _______ (the applicant must specify the subject matter, for instance, comedy, drama, musicals, action, adventure, suspense); pre-recorded video cassettes and discs featuring motion pictures and television programming; pre-recorded audio discs and non-disc digital media featuring musical and spoken performances; digital, analog and microchip-based storage and/or retrieval devices in the nature of computer and video equipment, namely, in film, disc, cassette, or chip formats featuring motion pictures and television programming; computer and video game software; slot machines; computer game cartridges; computer games on discs; game software accessible via wired and wireless computer networks; downloadable computer software, namely, ______ (the applicant must specify the type, for instance, computer games) from wired and wireless global computer networks to computers, game consoles, telephones, personal digital assistants, camera telephones, pocket PCs and hand-held gaming devices; computer application software in the field of computer-generated imagery and visual effects for ______ (the applicant must specify the function, for instance, creating visual effects and animation for motion pictures); pre-recorded DVDs and video cassettes featuring animations and motion pictures; downloadable ring tones, graphics, music and video via a global computer network and wireless devices, in International Class 9.

 

Electronic game machines, namely, ______ (the applicant must specify the items, for instance, electronic educational game machines for children), in International Class 28.

 

TMEP §1402.01.

 

     header feature.  [Note:  This message will NOT print]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.

 

The decision as to the proper classification of goods or services is a purely administrative matter which is within the sole discretion of the Patent and Trademark Office.  In re Tee‑Pak, Inc., 164 USPQ 88 (TTAB 1969).

 

RECITATION OF SERVICES AND CLASSIFICATION:

 

The recitation of services is unacceptable as indefinite because wording is vague and overly broad.  The applicant may adopt the following recitation, if accurate: 

 

Promoting the goods and services of others by preparing and disseminating advertisements accessed through a global computer network; electronic retailing services via a global computer network in the field of music, video and games, namely, online retail store services featuring downloadable pre-recorded music, video and games; online retailing store services via a global computer network featuring computer and video games and game-related merchandise, in International Class 35.

 

Broadcast services, namely, ______ (the applicant must specify the nature of the services, for instance, television broadcasting; video broadcasting); ______ (the applicant must specify the nature of the services, for instance, telecommunication services in the nature of; broadcast services in the nature of) motion picture and television program distribution services, namely, satellite, cable and broadcast transmission of motion pictures, television program and other entertainment programming; providing telecommunication services via a global computer network, namely, transmission of motion pictures, television program and other entertainment programming; electronic transmission of data, images and documents via computers and audiovisual equipment; providing instant messaging services and E-mail services; providing online discussion forums, chat rooms, news groups and bulletin boards for the transmission of messages among computer users concerning topics of computer games and video games; electronic transmission of data and messages via cellular telephone networks and wireless communication networks; providing downloadable streaming and transmission of wireless entertainment content in the nature of audiovisual works, motion pictures, trailers, television programming, music, and game by means of a global computer network and communications networks; rental of apparatus for transmitting and receiving cinematographic films, sound or video, in International Class 38.

 

Motion picture film production and distribution services; television program production and distribution services; production and distribution of pre-recorded video cassettes, DVDs, pre-recorded audio discs and pre-recorded non-disc digital storage media; providing information in the fields of entertainment, motion pictures and music over computer networks and global communication networks; providing online computer games; motion picture and television studio services; rental of motion picture and television scenery and equipment; provision of cinema and theater facilities; rental of apparatus for modifying, editing or reproducing cinematographic films, sound or video; recording, modifying or editing services for film, sound and video; entertainment services, namely, providing video games for play online, on wireless devices, on computers, or on game consoles; entertainment services in the form of production and distribution of animation, visual effects, and computer graphics for motion pictures and television; production of animated motion pictures, in  International Class 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.

 

The decision as to the proper classification of goods or services is a purely administrative matter which is within the sole discretion of the Patent and Trademark Office.  In re Tee‑Pak, Inc., 164 USPQ 88 (TTAB 1969).

 

REQUIREMENTS FOR A COMBINED APPLICATION:

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

DISCLAIMER:

 

The applicant must disclaim the descriptive wording “PICTURES” 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 of a feature of the applicant’s goods and services.  The term PICTURES refers to movies.[1]

 

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 “PICTURES” apart from the mark as shown.

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

 

CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS:

 

If the applicant is the owner of Registration Nos. 2894768, 2130279, 1863070, 1916207, 1258436 and others, the applicant must submit a claim of ownership.  37 C.F.R. Section 2.36; TMEP section 812.

 

RESPONSE:

 

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

 

NOTICE:  FEE CHANGE   

 

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.

 

/Marlene Bell/

Marlene Bell

Trademark Examiner

Law Office 105

(571) 272-9291

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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