Offc Action Outgoing

BEST BUY

BBY SOLUTIONS, INC.

TRADEMARK APPLICATION NO. 77559242 - BEST BUY - BBUY:198-1

To: Best Buy Enterprise Services, Inc. (aotrademark@fulbright.com)
Subject: TRADEMARK APPLICATION NO. 77559242 - BEST BUY - BBUY:198-1
Sent: 10/24/2008 5:27:27 PM
Sent As: ECOM109@USPTO.GOV
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4

UNITED STATES PATENT AND TRADEMARK OFFICE

 

    SERIAL NO:          77/559242

 

    MARK: BEST BUY           

 

 

        

*77559242*

    CORRESPONDENT ADDRESS:

          MICHAEL S. METTEAUER     

          FULBRIGHT & JAWORSKI L.L.P.      

          600 CONGRESS AVE STE 2400

          AUSTIN, TX 78701-3271        

           

 

RESPOND TO THIS ACTION:

http://www.gov.uspto.report/teas/eTEASpageD.htm

 

GENERAL TRADEMARK INFORMATION:

http://www.gov.uspto.report/main/trademarks.htm

 

 

    APPLICANT:           Best Buy Enterprise Services, Inc.    

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO:  

          BBUY:198-1        

    CORRESPONDENT E-MAIL ADDRESS: 

           aotrademark@fulbright.com

 

 

 

OFFICE 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: 10/24/2008

 

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

 

NO SIMILAR MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

 

Applicant, however, must respond to the following requirements.

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods and services.  If there is no common commercial or generic name, applicant must describe the product or service and intended consumer as well as its main purpose and intended uses. 

 

Applicant may adopt the following identification, if accurate: 

 

“Magnetic coded gift cards” in International Class 009.

 

“Retail store services and online retail store services in the field of consumer electronics, major household appliances, home theater equipment, photographic equipment, cellular phones, telecommunications products and services, information technology products, video equipment, audio equipment, portable electronic devices and related accessories, personal computers and other home office products, imaging equipment, digital equipment, video and electronic games, video and electronic game equipment and accessories, entertainment furniture, computer software, entertainment software, compact discs, digital versatile discs or DVDs, audio and video recordings, ring tones, gift cards, books, magazines batteries, automotive audio equipment; Provision of consumer  product information and consumer advice relating to the foregoing; Promoting the sale of the goods and services of others through customer loyalty and incentive award programs for retail customers; Promoting the sale of credit card accounts through the administration of customer loyalty and incentive award programs for retail customers; Vending machine services via automated kiosks in the field of consumer electronics” in International Class 035.

 

“Credit card services; Pre-paid purchase card services, namely, processing electronic payments made through prepaid cards; Providing extended warranties on consumer electronics equipment and major household appliances” in International Class 036.

 

“Installation, maintenance, and repair of consumer electronics, major household appliances, home theater equipment, photographic equipment, cellular phones, telecommunications equipment, information technology equipment, video equipment, audio equipment, portable electronic devices and related accessories, personal computers and other home office equipment, imaging equipment, digital equipment, video game equipment and accessories, and automotive audio equipment” in International Class 037.

 

“Information and advisory services relating to telecommunications products and services; providing access to music, video, software and video and electronic game files via the Internet and other telecommunications networks; Electronic transmission of streamed and downloadable audio and video files via the Internet and other telecommunications networks” in International Class 038.

 

“Entertainment services, namely providing web sites and online databases featuring music, videos, ring tones, computer games, and other entertainment-related content; Providing online educational and entertainment publications, namely, reviews, articles, and product comparisons in the field of consumer electronics, major household appliances, home theater equipment, photographic equipment, cellular phones, telecommunications products and services, information technology products, video equipment, audio equipment, portable electronic devices and related accessories, personal computers and other home office products, imaging equipment, digital equipment, video and electronic games, video and electronic game equipment and accessories, entertainment furniture, computer software, entertainment software, compact discs, digital versatile discs or DVDs, audio and video recordings, ring tones, gift cards, books, magazines batteries, and automotive audio equipment” in International Class 041.

 

“Providing a web site featuring temporary use of non-downloadable software allowing web site users to upload on-line videos and photos for sharing with others; installation, maintenance, and repair of video and electronic game software” in International Class 042.

 

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.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.

 

 

DISCLAIMER REQUIRED

 

Applicant must insert a disclaimer of “BEST BUY” in the application because it merely describes a feature of the applicant’s goods and services.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  Please see the attached definitions from the American Heritage Online Dictionary.

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “BEST BUY” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

/Robert J. Struck/

Robert J. Struck

Trademark Examining Attorney

Law Office 109

Phone - (571) 272-1513

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

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TRADEMARK APPLICATION NO. 77559242 - BEST BUY - BBUY:198-1

To: Best Buy Enterprise Services, Inc. (aotrademark@fulbright.com)
Subject: TRADEMARK APPLICATION NO. 77559242 - BEST BUY - BBUY:198-1
Sent: 10/24/2008 5:27:27 PM
Sent As: ECOM109@USPTO.GOV
Attachments:

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 10/24/2008 FOR

APPLICATION SERIAL NO. 77559242

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77559242&doc_type=OOA&mail_date=20081024 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 10/24/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

 

 

 


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