UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/640579
APPLICANT: PICTIONARY INCORPORATED
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PICTIONARY
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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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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.
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.
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:
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.