| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77554770 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Disclaimer Requirement The Examining Attorney has required the Applicant to disclaim the word "CLUB" apart from the mark as shown, on the basis that it merely describes a feature of applicant's services. The Examining Attorney states that the term "CLUB" is defined as "an organization that offers its subscribers certain benefits, as discounts, bonuses, or interest, in return for regular purchases or payments". The Examining Attorney further states that "Applicant's services presumably feature and/or are offered through an organization that offers its subscribers certain benefits, as discounts, bonuses, or interest, in return for regular purchases or payments". For the reasons articulated below, Applicant respectfully requests that the Examining Attorney withdraw the disclaimer requirement and allow the application to proceed to publication without it. The term "CLUB" in Applicant's mark does not immediately convey an idea of, or describe the nature and characteristics of the services being offered under the mark. The services in the application are recited as broadcasting services provided via a television transmission, and transmission services, namely, the transmission of audio and video entertainment media and pay-per-view television transmission services, and it is difficult to accept that the word "CLUB" is descriptive of such services. Applicant's services have no direct connection with the word "CLUB" as defined by the Examing Attorney. As a component of the mark, the word "CLUB" is only meant to convey something desirable about the services. Therefore, the word "CLUB" is not descriptive of Applicant's services but is at most suggestive of the services being offered. Further, Applicant is not providing an organization, or offering membership to an organization that offers its subscribers benefits, discounts, bonuses, or interest in return for regular purchases or payments. Applicant's services are not being offered through an organization that offers its subscribers certain benefits, as discounts, bonuses, or interest, in return for regular purchases or payments. Applicant is merely providing television service by which subscribers may gain access to a particular broadcast on a pay-per-view basis. Subscribers to Applicant's service are not associated with one another, nor are they required to make regular or recurring purchases or payments to receive said broadcasts. Rather, subscribers may make one-time payments to view a particular broadcast for a predetermined amount of time, or on a pay-per-view basis. Subscribers do not receive benefits, discounts, bonuses or interest in return for such payments. Given the foregoing, the word "CLUB" does not directly impart information about the services offered under the mark. The term is therefore not merely descriptive but rather suggestive and entitled to registration as a component of Applicant's mark. Accordingly, Applicant's mark should proceed to publication for opposition without entering a disclaimer.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 038 |
| DESCRIPTION | |
| Broadcasting services and provision of telecommunication access to video and audio content provided via a television transmission featuring promotional materials for programming content; Transmission services of audio and video entertainment media; pay-per-view transmission services; transmission of a variety of audio and video entertainment media over electronic media and interactive multimedia networks; television transmission services via cable, satellite and a wireless network; Telecommunication services, namely, local and long distance transmission of data, sound and images by means of telephone, telegraphic, cable, and satellite transmissions | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 038 |
| TRACKED TEXT DESCRIPTION | |
| Broadcasting services and provision of telecommunication access to video and audio content provided via a television
transmission featuring promotional materials for programming content; |
|
| FINAL DESCRIPTION | |
| Broadcasting services and provision of telecommunication access to video and audio content provided via a television transmission featuring promotional materials for programming content; Transmission services, namely, transmission of audio and video entertainment media; pay-per-view television transmission services; transmission of a variety of audio and video entertainment media over electronic media and interactive multimedia networks; television transmission services via cable, satellite and a wireless network; Telecommunication services, namely, local and long distance transmission of data, sound and images by means of telephone, telegraphic, cable, and satellite transmissions | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /TSuzuki/ |
| SIGNATORY'S NAME | Takehiko Suzuki |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| DATE SIGNED | 06/04/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jun 04 18:03:37 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.X-200 90604180337695139-7755477 0-430e8d393327f921ecf2203 5edab2a544c-N/A-N/A-20090 604175614412033 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Disclaimer Requirement
The Examining Attorney has required the Applicant to disclaim the word "CLUB" apart from the mark as shown, on the basis that it merely describes a feature of applicant's services. The Examining Attorney states that the term "CLUB" is defined as "an organization that offers its subscribers certain benefits, as discounts, bonuses, or interest, in return for regular purchases or payments". The Examining Attorney further states that "Applicant's services presumably feature and/or are offered through an organization that offers its subscribers certain benefits, as discounts, bonuses, or interest, in return for regular purchases or payments". For the reasons articulated below, Applicant respectfully requests that the Examining Attorney withdraw the disclaimer requirement and allow the application to proceed to publication without it.
The term "CLUB" in Applicant's mark does not immediately convey an idea of, or describe the nature and characteristics of the services being offered under the mark. The services in the application are recited as broadcasting services provided via a television transmission, and transmission services, namely, the transmission of audio and video entertainment media and pay-per-view television transmission services, and it is difficult to accept that the word "CLUB" is descriptive of such services. Applicant's services have no direct connection with the word "CLUB" as defined by the Examing Attorney. As a component of the mark, the word "CLUB" is only meant to convey something desirable about the services. Therefore, the word "CLUB" is not descriptive of Applicant's services but is at most suggestive of the services being offered.
Further, Applicant is not providing an organization, or offering membership to an organization that offers its subscribers benefits, discounts, bonuses, or interest in return for regular purchases or payments. Applicant's services are not being offered through an organization that offers its subscribers certain benefits, as discounts, bonuses, or interest, in return for regular purchases or payments. Applicant is merely providing television service by which subscribers may gain access to a particular broadcast on a pay-per-view basis. Subscribers to Applicant's service are not associated with one another, nor are they required to make regular or recurring purchases or payments to receive said broadcasts. Rather, subscribers may make one-time payments to view a particular broadcast for a predetermined amount of time, or on a pay-per-view basis. Subscribers do not receive benefits, discounts, bonuses or interest in return for such payments.
Given the foregoing, the word "CLUB" does not directly impart information about the services offered under the mark. The term is therefore not merely descriptive but rather suggestive and entitled to registration as a component of Applicant's mark. Accordingly, Applicant's mark should proceed to publication for opposition without entering a disclaimer.