Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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: 11/29/2009

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Statement Required – Significance of Mark

Applicant must explain whether “QRIO” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  Applicant must also explain whether this wording identifies a geographic place, and/or has any meaning in a foreign language.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

Amended Identification of Goods and Services Required

THIS REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The identification of Class 28 goods must be clarified because it is too broad and could include goods in other international classes, e.g., portable game machines for use with television receivers or computer or video monitors, which are Class 9 goods.  See TMEP §§1402.01, 1402.03.  Applicant may substitute the following wording, if accurate:  “portable stand alone video game machines.”

 

In Class 35, the wording “operating an on-line shopping mall with links to the retail web sites of others” is indefinite and must be clarified.  To be a service, an activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  Operating one’s own shopping mall is not a service rendered for the benefit of others.  Therefore, applicant must indicate with greater specificity the nature of the service, e.g., “promoting the goods and services of others by means of operating an on-line shopping mall.” 

 

In Class 41, the wording “game services provided on-line from a computer network” is indefinite and must be clarified because it could include services in other international classes, e.g., video game development services, which are in Class 42.  See TMEP §1402.01.  Therefore, the nature of the game services must be clarified, e.g., “game services, namely, providing on-line video games from a computer network.”

 

In Class 41, the wording “providing on-line computer games, music, video and related information” is indefinite and must be clarified because it could include goods and services in other international classes, e.g., providing downloadable music and videos, which are Class 9 goods.  See TMEP §1402.01.  Therefore, the nature of the “music, video and related information” must be identified with greater specificity, e.g., “providing on-line computer games; providing non-downloadable prerecorded music and video via a computer network; providing information relating to computer games, music and video via a computer network.”

 

In Class 41, the wording “online distribution of music, image or video” is indefinite and must be clarified because it could goods and services in other international classes (e.g., providing downloadable audio and video recordings via the internet is in Class 9; online retail store services featuring downloadable pre-recorded music, image and video files is in Class 35; electronic delivery of images via a computer network is in Class 38).  See TMEP §1402.01.  Therefore, the nature of the services must be indicated with greater specificity, e.g., “entertainment services, namely, providing online non-downloadable prerecorded music; entertainment services, namely, providing a web site featuring musical performances, musical videos, and related film clips and photographs); providing temporary use of non-downloadable online video games.”

 

In Class 41, the wording “providing on-line electronic publications, not downloadable” is indefinite and must be replaced with the common name of the type of publication, e.g., pamphlets, brochures, newsletters, journals, magazines, etc.  Applicant must also specify the subject matter or field of use of the publications.  TMEP §1402.03(e).

 

 

In Class 41, the wording “online distribution of radio and television programs” is indefinite and must be clarified because it could include goods and services in other international classes, e.g.,  downloadable radio and television programs provided via a video-on-demand service, which are Class 9 goods, and internet broadcasting services, which are in Class 38.  See TMEP §1402.01.  Please note that “distribution” of radio and television programs involves the activity of distributing them to radio and television stations for dissemination to the public.  Applicant also must indicate the subject matter of the programs, e.g., “entertainment services, namely, providing on-going radio and television programs in the field of _____ (indicate subject matter, e.g., news) via a global computer network.”

 

The remaining wording in the identification of goods and services is acceptable. 

 

Applicant may substitute the following identification, if accurate (suggested changes are in bold type): 

 

Class 9 – MP3 players; MP4 players; digital audio players and recorders which use integrated circuits as recording media; audio tape players and recorders; audio disc players and recorders; hard disc audio players and recorders; radio tuners; audio receivers; television receivers; liquid crystal display (LCD) televisions; plasma display panel (PDP) televisions; liquid crystal displays; liquid crystal display projectors; video tape players and recorders; video disc players and recorders; hard disc video players and recorders; set top boxes; video cameras; video cameras combined with video recorders and players; digital still cameras; cellular telephones; facsimile machines; personal digital assistants (PDAs); personal computers; scanners; computer printers; video game machines for use with televisions; computer application software for use in playing, recording and editing sound, image and data signals; computer application software for use in managing collections of sound, image and data signals on computer disc drives and computer software.

 

Class 28:  Portable stand alone video game machines.

 

Class 35:  Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; advertising services, namely, distribution and dissemination of advertising materials; provision of commercial information in the field of transactions of general merchandise and general consumer goods; business management and advice; market research; computerized file management; dissemination of advertising for others via an online communications network on the Internet; providing business information via website; file sharing and information portal in the field of e-commerce

 

Class 41:  Game services, namely, providing on-line video games; entertainment services, namely, providing on-line computer games; providing non-downloadable prerecorded music and video via a computer network; providing information relating to computer games, music and video via a computer network; rental of audio equipment; entertainment services, namely, providing online non-downloadable prerecorded music; entertainment services, namely, providing a web site featuring musical performances, musical videos, and related film clips and photographs; providing temporary use of non-downloadable online video games; providing on-line electronic publications, not downloadable, namely, _____ (indicate type of publications and subject matter, e.g., newsletters and magazines in the field of video games); online entertainment services, namely, providing on-going radio and television programs in the field of _____ (indicate subject matter, e.g., news) via a global computer network

 

See TMEP §§1402.01, 1402.03.

 

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

 

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.

 

Multiple-Class Application 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; 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

/Kathleen de Jonge/

Examining Attorney, Law Office 107

(571) 272-9152

(571) 273-9107 (fax)

 

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77813037) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 11/29/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77813037&doc_type=OOA&mail_date=20091129 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 11/29/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.