Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

The referenced application and correspondence dated January 10, 2011 have been reviewed by the assigned trademark examining attorney. The substitute declaration and amendment to allege use are acceptable and have been made of record.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

PRIOR PENDING APPLICATION NOTED

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

The filing date of pending Application Serial No. 77374496 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

IDENTIFICATION OF THE SERVICES

Applicant identifies the services as follows:

 

Class 41:          Entertainment in the nature of talent contests; providing information about music, the music industry, talent contests, and entertainment via computer networks and telecommunications networks; providing a website featuring online musical videos, musical performances, and related film clips; entertainment services, namely, an ongoing series featuring talent contests provided via the Internet and telecommunications networks

 

The wording “providing information about music, the music industry, talent contests, and entertainment via computer networks and telecommunications networks” in the identification of services is indefinite and must be clarified because the wording does not satisfy the Office’s requirements for specificity and the nature of the services is not clear.  See TMEP §1402.01. 

 

Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” in International Class 35; “providing information regarding financing and insuring an automobile” in International Class 36; and “providing information regarding the repair and maintenance of automobiles” in International Class 37. If the information is provided online or via a website, this information should also be included in the identification of services, e.g., “providing online information in the field of health care information” in International Class 44.  Therefore, to enable proper classification and examination of the application, applicant must specify the subject matter of the “information services.”

 

Applicant must amend the objectionable wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following amended identification of the services, if accurate:

 

• Entertainment in the nature of talent contests; providing entertainment information about music, the music industry, talent contests, and entertainment via computer networks and telecommunications networks; providing a website featuring online musical videos, musical performances, and related film clips; entertainment services, namely, an ongoing series featuring talent contests provided via the Internet and telecommunications networks (INT. CLASS 41)

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

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.  See TMEP §1402.04.

 

 

MARK DESCRIPTION

Applicant must submit an accurate and concise description of the literal and design elements in the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following is suggested, if accurate:

 

The mark consists of the wording ON THE SPOT with a stylized design of two persons within the letter “O” in the word SPOT.

 

 

CLOSING

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

/Tracy L. Fletcher/

Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

Telephone: (571) 272-9471

Facsimile: (571) 273-9471

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.