Offc Action Outgoing

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:

INTRODUCTION

On 3/15/2011, the trademark examining attorney issued an Office action:

Refusing the applicant’s mark under Trademark Act Section 2(d) with U.S. Registration Nos. 3279160, 3296344, and 3281644 and
Finding applicant’s identification of goods and/or services unacceptable.

On 5/17/2011, the applicant filed a timely response:

Arguing that the Section 2(d) refusal should be withdrawn and
Providing an amended identification of goods and/or services.

Having considered the applicant’s response, the examining attorney:

Finds the Section 2(d) refusal has been overcome;
Maintains and continues the requirement for an acceptable identification of goods and/or services and upon further review the examining attorney inadvertently provided applicant with an unacceptable identification suggestion with respect to the “providing digital information in the field of design and developing” services in Class 042.

PROCEDURAL ISSUE

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

Identification of Goods and/or Services - Generally Indefinite

International Class 009: Applicant has identified the goods and/or services as “Music and game selection systems comprising computer hardware and software for playing music and games, monitors, computer screens, computer mouses, network keyboards, audio and video music servers, speakers for music servers, remote controls for televisions and digital juke boxes, and-digital juke boxes; digital juke boxes and computer touch screens and electronic controller in the form of buttons all for distributing, selecting and playing audio and video musical and game information; musical juke boxes; audio and video music servers; and juke box systems, namely, one or more musical juke boxes connected electronically to select, download and play music content and parts

thereof.”

The wording “music and game selection systems comprising…monitors” in the identification of goods is indefinite and must be clarified because the type of monitors must be specified. See TMEP §1402.01.

International Class 035: Applicant has identified the goods and/or services as “Providing advertising services for others; providing computerized billing for others; business reporting services, namely, customer preferences for music and games; and providing digital information relating to advertising on the Internet for others.”

The wording “business reporting services, namely, customer preferences for music and games” in the identification of goods is indefinite and must be clarified because the business information regarding customer preferences must be specified. See TMEP §1402.01.

International Class 037: Applicant has identified the goods and/or services as “Repair and installation of digital juke box machines.”

The identification of services is acceptable as written.

International Class 038: Applicant has deleted Class 038 from the record.

International Class 039: Applicant has identified the goods and/or services as “Providing a website and website links to geographical information, map image, and trip routing in the field of bar, restaurant, home, business and entertainment locations.”

The identification of services is acceptable as written.

International Class 041: Applicant has identified the goods and/or services as “Entertainment services, namely, providing digital information relating to music and music videos; entertainment services, namely, providing digital information relating to social networking, Internet apps, video conferencing, music, music videos, advertising and electronic computer games provided via the Internet.”

The wording “entertainment services, namely, providing digital information relating to social networking, Internet apps, video conferencing, music, music videos, advertising and electronic computer games provided via the Internet” in the identification of services needs clarification because it is too broad and could include services classified in other international classes. Information services are classified based on the subject matter of the information. See TMEP §§1402.01, 1402.03.

International Class 042: Applicant has identified the goods and/or services as “Remote maintenance of computer software for others via a global computer network; monitoring services for digital jukeboxes relating to their maintenance, repair, management, statistics and payment; providing a website featuring technology that enables Internet users to create individual music playlists; providing digital information in the field of designing and developing.”

The wording “providing digital information in the field of designing and developing” in the identification of goods is indefinite and must be clarified because the good being designed and developed must be specified by common commercial name. See TMEP §1402.01.

International Class 045: Applicant has identified the goods and/or services as “Providing digital information in the field of on-line social networking services in the fields of music, games, entertainment and food.”

The identification of services is acceptable as written.

Applicant may adopt the following identification, if accurate:

Class 009: Music and game selection systems comprising computer hardware and software for playing music and games, {specify type of monitors, e.g., computer, battery, LCD, etc.} monitors, computer screens, computer mouses, network keyboards, audio and video music servers, speakers for music servers, remote controls for televisions and digital juke boxes, and-digital juke boxes; digital juke boxes and computer touch screens and electronic controller in the form of buttons all for distributing, selecting and playing audio and video musical and game information; musical juke boxes; audio and video music servers; and juke box systems, namely, one or more musical juke boxes connected electronically to select, download and play music content and parts thereof.

Class 035: Providing advertising services for others; providing computerized billing for others; Statistical reporting of customer preferences for music and games all for business purposes; and providing digital information relating to advertising on the Internet for others; Providing information in the field of advertising services;

Class 037: Repair and installation of digital juke box machines.

Class 039: Providing a website and website links to geographical information, map image, and trip routing in the field of bar, restaurant, home, business and entertainment locations.

Class 041: Entertainment services, namely, providing digital information relating to music and music videos; entertainment services, namely, providing digital information in the field of music, music videos, and electronic computer games via the Internet.

Class 042: Remote maintenance of computer software for others via a global computer network; monitoring services for digital jukeboxes relating to their maintenance, repair, management, statistics and payment; providing a website featuring technology that enables Internet users to create individual music playlists; providing digital information in the field of designing and developing of {indicate tangible item(s) or visual display(s), e.g., juke boxes, machinery, computer software, graphic arts, etc}; Providing digital information in the field of a non-downloadable internet-based software application for specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}[this does not include providing on-line computer games that are played on-line]

Class 045: Providing digital information in the field of on-line social networking services in the fields of music, games, entertainment and food; Providing digital information in the field of on-line social networking services.

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.

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.

ABANDONMENT ADVISORY

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services will be deleted from the application:

Class 009: Music and game selection systems comprising monitors;

Class 035: Business reporting services, namely, customer preferences for music and games; and providing digital information relating to advertising on the Internet for others.”

Class 041: Entertainment services, namely, providing digital information relating to music and music videos; entertainment services, namely, providing digital information relating to social networking, Internet apps, video conferencing, and advertising via the Internet.

Class 042: Providing digital information in the field of designing and developing.

The application will then proceed with the following goods and/or services only:

Class 009: Music and game selection systems comprising computer hardware and software for playing music and games, computer screens, computer mouses, network keyboards, audio and video music servers, speakers for music servers, remote controls for televisions and digital juke boxes, and-digital juke boxes; digital juke boxes and computer touch screens and electronic controller in the form of buttons all for distributing, selecting and playing audio and video musical and game information; musical juke boxes; audio and video music servers; and juke box systems, namely, one or more musical juke boxes connected electronically to select, download and play music content and parts thereof.

Class 035: Providing advertising services for others; providing computerized billing for others.

Class 037: Repair and installation of digital juke box machines.

Class 039: Providing a website and website links to geographical information, map image, and trip routing in the field of bar, restaurant, home, business and entertainment locations.

Class 041: Entertainment services, namely, providing digital information relating to music and music videos; Entertainment services, namely, providing digital information relating to music, music videos, and computer games provided via the Internet.

Class 042: Remote maintenance of computer software for others via a global computer network; monitoring services for digital jukeboxes relating to their maintenance, repair, management, statistics and payment; providing a website featuring technology that enables Internet users to create individual music playlists.

Class 045: Providing digital information in the field of on-line social networking services in the fields of music, games, entertainment and food.

See 37 C.F.R. §2.65(a); TMEP §718.02(a).

RESPONSE GUIDELINES

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

/mvaghani/

/Mayur Vaghani/

Examining Attorney

Law Office 102

Phone: (571) 272-1615

Fax: (571) 273-9102

mayur.vaghani@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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 trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

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.