Offc Action Outgoing

The following wording is too broad and must be clarified because it incorporates two services that are classified in different classes: “providing a website for the uploading, sharing, viewing and posting of photographs, digital images, movies, videos, and online journals, namely web blogs in general interest fields, and other related multimedia entertainment materials over a global computer network.” See TMEP §§1402.01, 1402.03. Applicant must also specify the nature of the “online publications.” Additionally, the wording “providing entertainment information” is too broad. Applicant should provide more information regarding the topics to be covered so that it is clear that the services are classified properly. Similarly, applicant must specify what is being reviewed or recommended in the following wording: “providing information, reviews and personalized recommendations in the field of entertainment.” Applicant should also revise the wording “entertainment services, namely, production and distribution of live musical performances” as it is unclear what is meant by “distribution” of a “live musical performance.” Applicant must clarify if they are distributing recordings of the performances or if something else is meant by such language. Applicant must also clarify the nature of the “content” that is being rented.

Finally, the wording “providing access to a database” must be clarified. If applicant is providing the database, providing the “access” is consider part of, or ancillary to, the provision of the database and does not need to be set out in the identification. Alternatively, if applicant is serving as a internet service provider, then applicant must clarify the identification to reflect the provision of such services. If applicant is merely providing a database, then the additional language regarding “providing access” is unnecessary.

Applicant may adopt any or all of the following suggestions in the identification below, if accurate:

International Class 35: Distribution of compact discs featuring live musical performances

International Class 41: Education and training services, namely, arranging and conducting personal training, classes, workshops, conferences and seminars in the field of computers, computer software, online services, information technology, website design, and consumer electronics; arranging professional workshop and training courses; computer education training services; training in the use and operation of computers, computer software and consumer electronics; online journals, namely, blogs featuring general interest topics covering a wide variety of topics and subject matter; providing on-line publications in the nature of {applicant must specify the exact nature of the publication, for example, magazine, newsletter, journal, etc.} in the field of computers, computer software and consumer electronics; providing information, podcasts and webcasts in the field of entertainment via the Internet concerning movies, music, videos, television, sports, news, history, science, politics, comedy, children's entertainment, animation, culture, and current events; digital video, audio and multimedia publishing services; providing entertainment information regarding {applicant must specify, for example, making of television shows, the film industry, the music industry, etc.}; providing information, reviews and personalized recommendations of {applicant must specify, for example, movies, books, music, computer games, etc.} in the field of entertainment; entertainment services, namely, production of live musical performances; entertainment services, namely, providing prerecorded live musical performances online via a global computer network; rental of digital entertainment content {applicant must specify the nature of the content} by means of communications networks, namely, provision of non-downloadable films and television programs via an online video-on-demand service; providing a database of digital entertainment content {applicant should specify the content, i.e., sound recordings, movie reviews, feature films, etc.} via electronic communication networks; entertainment services, namely, providing prerecorded audio and audiovisual content, information and commentary in the fields of music, concerts, videos, movies, television, books, news, sports, games and cultural events all via a global computer network

International Class 42: Providing a website for the uploading, sharing, viewing and posting of photographs, digital images, movies, videos, online journals covering general interest topics, and other related multimedia entertainment materials over a global computer network covering a wide variety of topics and subjects; application services provider, namely, hosting software for providing an on-line database in the field of entertainment featuring {applicant must specify the content, i.e., sound recordings, movie reviews, feature films, etc.}

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

Prosecuting a Multiple Class Application

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 35, 41, and 42. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

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 under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

(1) Applicant must list the goods and/or services by international class; 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).

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

Application Based on Both Sections 1(a) and 44(d)

The application specifies both a use in commerce basis under Trademark Act Section 1(a) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(a), 1126(d); 37 C.F.R. §2.34(a)(1), (a)(4). However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

If applicant intends to rely on Section 44(e), in addition to Section 1(a), as a basis for registration, applicant must provide a written statement to that effect. As applicant is domiciled in the United States, applicant must establish that applicant (a) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (b) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin. 15 U.S.C. §1126(b)-(c); see TMEP §§1002.03, 1002.04, 1002.05. “Country of origin” refers to the country in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the country in which an applicant is domiciled. 15 U.S.C. §1126(c); TMEP §1002.04. Therefore, if applicant wishes to perfect a Section 44(e) filing basis, applicant must submit (a) a true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq. If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01; and (b) a written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04, 1002.05

If applicant intends to rely solely on a use in commerce basis under Section 1(a), while retaining its Section 44(d) priority filing date, applicant must provide a written statement that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(a) basis. See TMEP §§806.02(f), 806.04(b), 1003.04.

PLEASE NOTE: If applicant wishes to rely on Section 44(e), but the underlying foreign application has not matured into registration, action on this application will be suspended pending receipt of the certificate of the foreign registration, or true copy thereof. TMEP §§716.02(b), 1003.04.

Response Guidelines

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

/MDI/

Marilyn D. Izzi

Trademark Examining Attorny, Law Office 112

(571) 270-1523 (phone)

(571) 270-2523 (fax)

marilyn.izzi@uspto

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 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.