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 76/642888

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

No Conflicting Marks Noted

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. Section 1052(d). TMEP section 704.01.

Identification of Goods

The identification of goods as “computer software for use in…television programming” is unacceptable as indefinite because Applicant has not specified the function of the software with respect to television programming. Additionally, Applicant must specify the function of the software, and the field of use, if applicable, for the goods identified as “computer software.” Applicant must specify the subject matter of the DVD’s and CD’s if they are pre-recorded. If the goods are blank, Applicant should so state. Applicant must specify the common commercial name of the goods identified as “electronic media.” If there is no common commercial name of the goods, Applicant must describe the product and its intended uses, be as complete and specific as possible and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms such as “electronic media” then those words must be followed by the word “namely” and the goods listed by their common commercial name. If the electronic media are blank, Applicant must so specify, otherwise, Applicant must specify the subject matter of the recording. The balance of the identification is acceptable as written. The applicant may adopt the following identification, if accurate (suggested revisions are bolded): Computer software for use in creation and playing user-created animated music videos, video games, massive, and multiplayer, online role-playing games (MMORPGs); computer software for [specify function of software] for use in television programming; computer software [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use]; blank DVDs; blank CDs; pre-recorded electronic media, namely, [specify common commercial name or describe the goods with particularity, e.g., prerecorded audio tapes featuring music], all in Class 9.

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

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

Disclaimer

The applicant must disclaim the descriptive wording "COMICS" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because it is descriptive of a feature or characteristic of the goods.

A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use COMICS apart from the mark as shown.

Requirement for Information

The examining attorney requires information about the goods to determine whether all or part of the mark is merely descriptive as applied to the goods. TMEP sec. 814. The applicant must provide product information for the goods. This may take the form of a fact sheet, instruction manual, or advertisement. If unavailable, the applicant should submit the information for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods. In particular, Applicant must specify the role of comics in its goods.

In all cases, the submitted factual information must make clear how the goods operate, its salient features, and its prospective customer and/or channel of trade. This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination. Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).

Caroline F. Weimer

Trademark Lawyer

Law Office 115

571-272-9237 (T)

571-273-9237(F)

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.