| To: | Midstream Media, Inc. (patrademarks@manatt.com) |
| Subject: | TRADEMARK APPLICATION NO. 77121527 - YOUPORN - 29683.030 |
| Sent: | 6/21/2007 2:05:47 PM |
| Sent As: | ECOM117@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/121527
MARK: YOUPORN
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Midstream Media, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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EXAMINER’S AMENDMENT/PRIORITY ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 6/21/2007
OFFICE SEARCH: 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 704.02.
AMENDMENT: In accordance with the authorization granted by SUSAN E. HOLLANDER on June 21, 2007, the application has been AMENDED as indicated below. Please advise the undersigned immediately if there is an objection to the amendment.
If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).
The following statement describing color in the mark is added to the record:
The color(s) pink, white and black are claimed as a feature of the mark. The mark consists of the wording “YOUPORN” with the word “YOU” appearing in pink, outlined in white and outlined again in pink with a pink star inside the letter “O”. The word “PORN” is in black, outlined in white and outlined again in black with a pink star inside the letter “O”.
37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii).
The application will be given priority as an amended application if a response to the requirements stated below is received within two months of the issue/mailing date.
The following issues were discussed in communication with SUSAN E. HOLLANDER on June 21, 2007.
Identification of Services Indefinite
The identification of services needs clarification because it is indefinite and may contain services classified in more than one class. Specifically the wording “distribution” is indefinite because it could refer to services in classes 35, 38 or 41. Applicant must amend this 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). TMEP §1402.01. The underlined wording in the identification below is indefinite and/or improperly classified and is followed by suggested wording in brackets. Applicant may adopt any or all of the following identifications and classifications, if accurate:
Provision of non-downloadable adult-themed films via a video-on-demand service [Class 41]
Transmission of sound and video in the nature of adult-themed motion pictures over the Internet or over other wired and wireless communications networks [Class 38]
In the identification, applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases. Applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....” TMEP §§1402.03(a) and 1402.11.
For assistance with identifying 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.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees may be insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that may be classified in at least two international classes, however applicant paid the fee for only one class.
Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
Multiple Class Requirements
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.
If applicant has particular questions regarding any of the issues set forth in this Office action, applicant may telephone the assigned trademark examining attorney.
/Blake Lovelace/
James B. Lovelace
LAW OFFICE 117
PHONE: 571.270.1533
FAX: 571.270.2533
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.