PTO Form 1771 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1771 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Post-Publication Amendment

To the Commissioner for Trademarks:

Application serial no. 77261931 has been amended as follows:

EXPLANATION OF FILING

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:  Hulu, LLC

 

Application Serial No.:  77261931

 

Filing Date:  August 22, 2007

 

Mark:  HULU

 

Examining Attorney:  Judith M. Helfman, Esq.

 

Law Office:  114

 

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APPLICANT’S REQUEST FOR POST-PUBLICATION AMENDMENT

 

 

Pursuant to Section 1505 of the Trademark Manual of Examining Procedure, Applicant Hulu, LLC (“Applicant”), by and through its attorneys, respectfully submits this Request For Post-Publication Amendment (the “Request”) concerning Application Serial No. 77261931 (the “Application”).  As grounds for the Request, Applicant states as follows:

 

1.  Applicant notes that the Application was published for opposition on June 10, 2008, and received a Notice of Allowance on June 9, 2009.  On March 23, 2011, the USPTO granted Applicant’s fourth Extension Request to submit a Statement of Use.

 

2.  Applicant has received a request from Warner-Elektra-Atlantic Corporation (“WEA”) to amend certain wording in the Class 9 and Class 41 identifications, namely the covered item “music video interactive discs (MVIs)”.  WEA bases its request on its ownership of Registration No. 3740360 for the mark MVI, Registration No. 3680230 for the mark MVI MUSIC VIDEO INTERACTIVE (Stylized) (“MUSIC VIDEO INTERACTIVE” disclaimed), and Supplemental Registration No. 3621118 for the mark MUSICVIDEO INTERACTIVE (“MUSIC VIDEO” disclaimed).

 

3.  Without conceding that any of the WEA registrations listed above were properly granted by the USPTO or would constitute a valid basis for opposing the Application, Applicant wishes to accommodate WEA’s request.  Applicant believes that this accommodation would also support the USPTO’s policy to avoid use of registered marks in the text of identifications of goods and services.

 

4.  Applicant hereby requests that the wording “music video interactive discs (MVIs)” be amended to read “interactive discs featuring music and music videos”.  Please note that the wording to be amended appears twice in the Class 9 identification and twice in the Class 41 identification.

 

5.  Applicant submits that the amended wording is essentially equivalent to the original wording and does not expand the coverage of the Class 9 and Class 41 identifications.  Applicant further submits that, pursuant to TMEP §§ 1505.01(c)(i) and 1505.03(b), the requested amendment does not require re-publication of the Application.

 

6.  Applicant further submits that granting the Request would be consistent with the USPTO’s approval of a prior request by Applicant to amend identical wording in USA Trademark Application Serial No. 77419076.

 

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Applicant respectfully requests that the USPTO grant the Request and amend the Class 9 and Class 41 identifications as stated above, without re-publication of the Application.

 

The Examining Attorney is invited to contact the undersigned with any remaining questions or concerns.

 

Respectfully submitted,

/Curtis Krechevsky/

 

Curtis Krechevsky

Cantor Colburn LLP

 

Attorneys for Applicant Hulu, LLC

Our Ref:  HUL0003TUS

 

Curtis Krechevsky, Esq.

Cantor Colburn LLP

20 Church Street

22^nd Floor

Hartford, Connecticut  06103-3207  U.S.A.

Phone:  860-286-2929

Fax:  860-286-0115

Email:  TM-CT@cantorcolburn.com

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Blank recordable DVDs, CDs, music video interactive discs (MVIs), video and audio cassettes, and laser discs; pre-recorded media, namely, DVDs, CDs, music video interactive discs (MVIs), video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos; digital media, namely, downloadable audio-visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos; computer software, namely, software tools for editing of audio-visual content, video search and annotation software, content protection software, ad tracking and optimization software, video game software, interactive game programs, software platform for providing programmatic interfaces for third parties to access website content and data for web development and website application development; computer software for streaming audio-visual media content to mobile digital electronic devices; interactive games, specifically, computer and video game programs featuring video content from motion pictures, television programming, or music videos
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Blank recordable DVDs, CDs, music video interactive discs (MVIs), video and audio cassettes, and laser discs; Blank recordable DVDs, CDs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs; pre-recorded media, namely, DVDs, CDs, music video interactive discs (MVIs), video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos; pre-recorded media, namely, DVDs, CDs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos; digital media, namely, downloadable audio-visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos; computer software, namely, software tools for editing of audio-visual content, video search and annotation software, content protection software, ad tracking and optimization software, video game software, interactive game programs, software platform for providing programmatic interfaces for third parties to access website content and data for web development and website application development; computer software for streaming audio-visual media content to mobile digital electronic devices; interactive games, specifically, computer and video game programs featuring video content from motion pictures, television programming, or music videosClass 009 for Blank recordable DVDs, CDs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs; pre-recorded media, namely, DVDs, CDs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos; digital media, namely, downloadable audio-visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos; computer software, namely, software tools for editing of audio-visual content, video search and annotation software, content protection software, ad tracking and optimization software, video game software, interactive game programs, software platform for providing programmatic interfaces for third parties to access website content and data for web development and website application development; computer software for streaming audio-visual media content to mobile digital electronic devices; interactive games, specifically, computer and video game programs featuring video content from motion pictures, television programming, or music videos
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Education and entertainment services, namely, providing interactive online games; providing online interactive resource and programming guides on the subjects of motion pictures, television programming, videos, music videos, and music tailored to viewer's programming preferences; electronic publishing services, namely, publication of text, graphics, photographs, images, and audio-visual works of others online for downloading, and on CDs, DVDs, music video interactive discs (MVIs), and podcasts, featuring news, entertainment, sports, comedy, drama, music, and music videos; production and rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music, for streaming or downloading in the fields of news, entertainment, sports, comedy, drama, music, and music videos; production and rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music, on CDs, DVDs, music video interactive discs (MVIs), and podcasts, in the fields of news, entertainment, sports, comedy, drama, music, and music videos; rental of video games; production of video and computer game software; providing a website featuring video and interactive games
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Education and entertainment services, namely, providing interactive online games; providing online interactive resource and programming guides on the subjects of motion pictures, television programming, videos, music videos, and music tailored to viewer's programming preferences; electronic publishing services, namely, publication of text, graphics, photographs, images, and audio-visual works of others online for downloading, and on CDs, DVDs, music video interactive discs (MVIs), and podcasts, featuring news, entertainment, sports, comedy, drama, music, and music videos; electronic publishing services, namely, publication of text, graphics, photographs, images, and audio-visual works of others online for downloading, and on CDs, DVDs, interactive discs featuring music and music videos, and podcasts, featuring news, entertainment, sports, comedy, drama, music, and music videos; production and rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music, for streaming or downloading in the fields of news, entertainment, sports, comedy, drama, music, and music videos; production and rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music, on CDs, DVDs, music video interactive discs (MVIs), and podcasts, in the fields of news, entertainment, sports, comedy, drama, music, and music videos; production and rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music, on CDs, DVDs, interactive discs featuring music and music videos, and podcasts, in the fields of news, entertainment, sports, comedy, drama, music, and music videos; rental of video games; production of video and computer game software; providing a website featuring video and interactive gamesClass 041 for Education and entertainment services, namely, providing interactive online games; providing online interactive resource and programming guides on the subjects of motion pictures, television programming, videos, music videos, and music tailored to viewer's programming preferences; electronic publishing services, namely, publication of text, graphics, photographs, images, and audio-visual works of others online for downloading, and on CDs, DVDs, interactive discs featuring music and music videos, and podcasts, featuring news, entertainment, sports, comedy, drama, music, and music videos; production and rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music, for streaming or downloading in the fields of news, entertainment, sports, comedy, drama, music, and music videos; production and rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music, on CDs, DVDs, interactive discs featuring music and music videos, and podcasts, in the fields of news, entertainment, sports, comedy, drama, music, and music videos; rental of video games; production of video and computer game software; providing a website featuring video and interactive games
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

SIGNATURE(S)

Signature: /Curtis Krechevsky/     Date: 05/10/2011
Signatory's Name: Curtis Krechevsky
Signatory's Position: Attorney of Record, Massachusetts State Bar Member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77261931
Internet Transmission Date: Tue May 10 10:07:59 EDT 2011
TEAS Stamp: USPTO/PPA-XX.XXX.XX.XX-20110510100759849
004-77261931-4804a8c4b83b6e2cf62966da1d0
a5aa50c2-N/A-N/A-20110510095706537418