Offc Action Outgoing

RESPONSE TIME LIMIT: TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

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.

Serial Number 76/640579

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

Prior Registrations

If the applicant is the owner of Registration Nos. 1392492, 1549250, 2821448 and others, the applicant must submit a claim of ownership. 37 C.F.R. Section 2.36; TMEP section 812.

Identification

The wording “providing educational and entertainment services via a global computer network web site featuring games, product trivia, activities and educational and entertainment product information intended for consumers of all ages” in the identification of services is unacceptable as indefinite because it is not sufficiently precise.

It is important to note that providing product information for one’s own goods does not constitute a service as contemplated by the Trademark Act. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§1301.01 et seq. The following criteria have evolved for determining what constitutes a service, in connection with which a mark may be registered: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than applicant; and (3) a service must be an activity that is qualitatively different from anything necessarily done in connection with the sale of applicant’s goods or the performance of another service. In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984); see In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Moore Business Forms, Inc., 24 USPQ2d 1638 (TTAB 1992); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).

Applicant may adopt the following identification of services, if accurate: EDUCATIONAL AND ENTERTAINMENT SERVICES PROVIDED VIA A GLOBAL COMPUTER NETWORK WEB SITE, NAMELY, COMPUTER GAMES, AN ONLINE ACTIVITY WHERE YOU CREATE YOUR OWN MUSIC VIDEOS AND ENTERTAINMENT INFORMATION FEATURING THE PRODUCTS OF OTHERS in International Class 41. TMEP §1402.01, if accurate. TMEP §1402.11.

The applicant is encouraged to visit the Patent and Trademark Office’s web site at http://tess2.gov.uspto.report/netahtml/tidm.html to find examples of acceptable identifications of goods and services. The applicant is encouraged to use the precise wording from recent registrations in amending the identification to items not found in the Manual of Acceptable Identifications.

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

Search

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.

Response Guidelines

No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing. If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. Any arguments regarding the contents of the Office Action should be made in writing, as those discussions should be made of record.

USPTO

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: 571-272-9397

Fax: 571-273

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

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