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:

THIS IS A FINAL ACTION.

This final Office action is a response to applicant’s communication filed March 17, 2014.

STATUS

In a non-final Office action filed October 2, 2013, the examining attorney required applicant to claim ownership of prior registrations, translate the term “YAMAHA,” provide a description of the mark, amend the identification of goods and services and disclaim “ENTERTAINMENT GROUP OF AMERICA.” In its response, applicant 1) Claimed ownership of the prior registrations; 2) Translated “YAMAHA;” 3) Provided a description of the mark; 4) Amended the identification; and 5) Disclaimed “ENTERTAINMENT GROUP OF AMERICA.” Numbers 1, 2, 3 and 5 are acceptable.

IDENTIFICATION REQUIREMENTS ARE MADE FINAL

The following requirements are now made FINAL. See37 C.F.R. §2.64(a).

The identification of goods and services is indefinite and must be clarified. The nature of the downloadable musical scores and sheet music must be clarified. Downloadable music and downloadable sound data are Class 9 goods, not Class 41 services (and the goods already appear to be listed in Class 9). Music composition is listed twice in Class 41 and so the redundant entry must be deleted. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

“Optical discs pre-recorded with music, in MIDI file format; pre-recorded optical discs featuring music or cinematographic films; blank optical discs; blank CD-Rs for sound recording; blank DVD-Rs for video recording; personal computers; tablet computers; portable media players; computer software for generating, reproducing, effecting, and/or recording sound; computer software for arranging, sequencing music; computer software for creating computer music; computer software for playing music; computer software for displaying music sheet; computer software for reproducing images; computer software for encoding/playing MP3 music; computer software for encoding and/or reproducing sound or images; computer software for downloading sound and images; computer software for authoring/producing digital contents; computer communications software for transmitting digital contents; computer software for playing karaoke music; computer software for controlling audio apparatus; downloadable computer software for use in generating, reproducing, effecting, or recording sound; electronic publications, namely, books featuring music, recorded on computer media; electronic publications, namely, books featuring musical scores and sheet music, recorded on computer media; downloadable electronic music via a global computer network; downloadable electronic music; downloadable electronic data files featuring musical scores and sheet music; downloadable electronic music for signaling an incoming call of cellular phones; downloadable music files for use in the operation of electronic musical instruments; downloadable electronic data files featuring music,” in International Class 9.

“Education services, namely, conducting classes in the field of music; education services, namely, conducting seminars in the field of computers and computer programs; entertainment services in the field of music, namely, presentation of live shows and concerts; production of sound recordings; music composition for others, including ring tones for cellular phones; providing on-line non-downloadable electronic publications in the nature of books and magazines in the field of musical scores and sheet music, providing on-line non-downloadable electronic publications in the nature magazines in the field of music; providing information on-line from a computer database or a global computer network relating to entertainment, education or music; entertainment services, namely, providing information in the field of music; presentation of live show performances; presentation of live show performances on-line via a global computer network; sound editing in the nature of sound synthesis and music composition for cellular phone users; providing non-downloadable pre-recorded digital music from a global computer network; providing temporary use of online non-downloadable computer software in the field of playing music; providing electronic on-line non-downloadable databases in the field of music and musical artists images via a global computer network, cellular phones, and other communication media; providing an internet website portal in the field of music; entertainment services, namely, providing online, pre-recorded music and audiovisual recordings in the field of music; entertainment services, namely, production of live music concert tours by musical artists; production of sound recordings; providing websites featuring information on musical artists; providing information about performances to be given by musical artists on tours: production of sound and music video recordings; music production services; providing an Internet website portal featuring links to musical artist websites and music performance ticket information,” in International Class 41.

Although identifications of goods or services may be amended to clarify or limit the goods or services, adding to or broadening the scope of the goods 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 or services that are not within the scope of the goods set forth in the present identification.

For assistance with identifying and classifying goods 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.

For the foregoing reasons, the requirements are maintained and made FINAL.

PROPER RESPONSE TO A FINAL OFFICE ACTION—PARTIAL REQUIREMENTS

Applicant must respond within six months of the date of issuance of this final Office action or the following goods and services to which the final requirements apply will be deleted from the application by Examiner’s Amendment: “downloadable electronic musical scores and sheet music” in Class 9 and “providing downloadable music by way of electronic communication means; providing downloadable sound data by way of electronic communication means; music composition services for others” (the redundant entry) in Class 41. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

The application will then proceed for the remaining goods and services.

Applicant may respond by providing one or both of the following:

(1) A response that fully satisfies all outstanding requirements;

(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

QUESTIONS

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

John.Gartner@uspto.gov (informal correspondence)

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.