NOTE TO THE FILE
SERIAL NUMBER: 77947738
DATE: 01/20/2011
NAME: ekon
NOTE:
From: Gibbons, Sarah E [mailto:SEGibbons@DIRECTV.com]
Sent: Thursday, January 20, 2011 1:11 PM
To: Kon, Elissa Garber
Subject: RE: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738
Dear Elissa,
I think we’ve come to an agreement! I’ll be in the office all day if you want to discuss, otherwise feel free to go ahead and issue the priority action and we will pay the additional fees via credit card ( we do not have a deposit account).
For Class 38, I’m OK with your proposal:
class 38--satellite television broadcasting and transmission services featuring interactive television viewing functions that permit users to view and share audio files, video files, photographs, images and other multimedia content between and among computers, set-top boxes, and other audiovisual devices
And then we’ll go with the Class 41 so far + your proposal there as well:
Distribution of television programs for others; television programming; programming on a global computer network; entertainment services, namely, providing ongoing television programs featuring music, musical entertainment, information about music and entertainment in the field of music, all via satellite; providing on-line interactive computer databases in the field of entertainment information featuring television programming lists, program schedules and program- related information; providing on-line interactive computer databases featuring entertainment information and schedules about television programming, movies, and other digital images, audio, video and other multimedia materials; Entertainment services, namely, providing on-line computer games; providing computer games via satellite transmission; providing a computer game for use network-wide by network users; Entertainment services, namely, providing ongoing television programs featuring general news and local news that also include interactive functions that permit viewers to view multiple images and sources of television programming simultaneously; Entertainment services, namely, providing ongoing television programs featuring general news and local news as well as a variety of information of interest to specific geographic areas that also include interactive components that let viewers choose what to watch at various times, to obtain information about popular programs in their local viewing area and to more narrowly define the types of related information they receive and programs they view; Entertainment services, namely, ongoing television programs in the field of geographical, categorical, real-time programming ratings that also include interactive components that let viewers more narrowly define the types of related information they receive and programs they view; Entertainment services, namely, providing ongoing television programs featuring general information relating to satellite television service, satellite television equipment and hardware, satellite television programming and audio, visual and other multimedia content that also include interactive components that allow users to define their viewing preference; On-line, nondownloadable newsletters featuring general information relating to entertainment, namely, television, movies and other multimedia entertainment-related content; On-line, nondownloadable newsletters featuring general information relating to satellite telecommunication services and satellite telecommunications hardware + entertainment services, namely, providing ongoing television programs in a wide variety of fields that also feature interactive television viewing functions that permit viewers to view and use computer applications simultaneously while viewing television programs
And this will be for all 3 of the applications.
Thanks,
Sarah
310-964-1047
From: Kon, Elissa Garber [mailto:ElissaGarber.Kon@USPTO.GOV]
Sent: Thursday, January 20, 2011 4:19 AM
To: Gibbons, Sarah E
Subject: RE: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738
Hi, Sarah
Maybe it would be easier to complete this by phone just to confirm the final versions. If you end up adding Class 38, please let me know how you want to pay the filing fees--online using TEAS, or if you want me to have our Office charge your deposit account (if you have one). Otherwise, I can issue a priority action on Class 38 and you can respond by adding that class and paying the fees. I will be reachable by phone later this afternoon. Thanx.
Class 38
The following services would not be acceptable in Class 38 as written: communication services, namely, interactive television viewing functions that permit users to view and share audio files, video files, photographs, images and other multimedia content between and among computers, set-top boxes, and other audiovisual devices
Interactive television "viewing functions" are not a service. I looked at that webpage and these are apps, which is considered software. If it is downloadable, then it's in 9 and if you just access it but don't download it, then it's in Class 42 (temporary use of nondownloadable software accessible via television screen that enables users to .....). I think this is incidental to the provision of satellite television services. So, I propose you add Class 38 to these applications with the following services:
Class 41
The following services would not be acceptable in Class 41 as written: Entertainment services, namely, providing television programming via interactive television viewing functions that permit viewers to view and use computer applications simultaneously while viewing television programming
"Television programming," in trademark language, means scheduling services. If by "programming" you mean programs, you have to say the program content or type of program. You can add the following to Class 41 instead:
entertainment services, namely, providing ongoing television programs in a wide variety of fieldsthat also feature interactive television viewing functions that permit viewers to view and use computer applications simultaneously while viewing television programs (or you can list the topics instead of saying "wide variety of fields," something like, comedy, drama, science, children's entertainment, reality television and a wide variety of fields)
Here is Class 41 so far, without the stuff we are discussing above, so you have a reference:
Distribution of television programs for others; television programming; programming on a global computer network; entertainment services, namely, providing ongoing television programs featuring music, musical entertainment, information about music and entertainment in the field of music, all via satellite; providing on-line interactive computer databases in the field of entertainment information featuring television programming lists, program schedules and program- related information; providing on-line interactive computer databases featuring entertainment information and schedules about television programming, movies, and other digital images, audio, video and other multimedia materials; Entertainment services, namely, providing on-line computer games; providing computer games via satellite transmission; providing a computer game for use network-wide by network users; Entertainment services, namely, providing ongoing television programs featuring general news and local news that also include interactive functions that permit viewers to view multiple images and sources of television programming simultaneously; Entertainment services, namely, providing ongoing television programs featuring general news and local news as well as a variety of information of interest to specific geographic areas that also include interactive components that let viewers choose what to watch at various times, to obtain information about popular programs in their local viewing area and to more narrowly define the types of related information they receive and programs they view; Entertainment services, namely, ongoing television programs in the field of geographical, categorical, real-time programming ratings that also include interactive components that let viewers more narrowly define the types of related information they receive and programs they view; Entertainment services, namely, providing ongoing television programs featuring general information relating to satellite television service, satellite television equipment and hardware, satellite television programming and audio, visual and other multimedia content that also include interactive components that allow users to define their viewing preference; On-line, nondownloadable newsletters featuring general information relating to entertainment, namely, television, movies and other multimedia entertainment-related content; On-line, nondownloadable newsletters featuring general information relating to satellite telecommunication services and satellite telecommunications hardware
/Elissa Garber Kon/
Attorney, Law Office 106
phone: (571) 272-9181
fax: (571) 273-9181
email: elissagarber.kon@uspto.gov
From: Gibbons, Sarah E [mailto:SEGibbons@DIRECTV.com]
Sent: Wednesday, January 19, 2011 6:52 PM
To: Kon, Elissa Garber
Subject: RE: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738Hi Elissa,
Yes, we do want to enter the Class 41 changes to all of the applications you mention.
However, after further discussion we actually believe the “ “ I had wanted to move to Class 38 should indeed stay in 41, because our ‘TV Apps’ as we call them, do contain our content. So, if you agree (see http://tvapps.directv.com/index.do for reference), I would like to keep the following in 41, and state it as follows:
Entertainment services, namely, providing television programming via interactive television viewing functions that permit viewers to view and use computer applications simultaneously while viewing television programming
As for Class 38, we do want to ADD Class 38 to these 3 Class 41 applications (since the sister applications have already published) because we think it is important to call out the interactive components specifically. So we would only like to add: “communication services, namely, interactive television viewing functions that permit users to view and share audio files, video files, photographs, images and other multimedia content between and among computers, set-top boxes, and other audiovisual devices”
Thank you,
Sarah
From: Kon, Elissa Garber [mailto:ElissaGarber.Kon@USPTO.GOV]
Sent: Wednesday, January 19, 2011 10:00 AM
To: Gibbons, Sarah E
Subject: RE: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738
Hi, Sarah
Your red proposed changes are acceptable. You mention at the end you wanted to move " " to Class 38. I have 3 Class 41 applications right now that look like they have the same ID: 77947744 (DIRECTV. IT'LL CHANGE YOUR LIFE); 77947738 (IT'LL CHANGE YOUR LIFE) and 77947762 (DIRECTV. ANYTIME, ANYPLACE, ANYWHERE YOU WANT TO WATCH). I can enter the Class 41 changes below in all 3 of these for you by examiner's amendment.
Did you want to add Class 38 to this (and to the other Class 41) applications? It appears that the Class 38 sister applications have already been assigned publication dates -- (77947737, 77947743 and 77947758). Those Class 38 applications already include satellite tv broadcasting, satellite transmission services and related transmission services, so those services would already encompass any such services, even those with interactive components, even though the ID's do not specifically include the interactive components.
So, please let me know if you want want to ADD Class 38 to these 3 Class 41 applications, or if you just want to limit them to Class 41. Then, I"ll go ahead and enter the amendments for you. If you want to add Class 38, I'll need an email signed by a person on the deposit account authorizing me to charge your deposit account to add the classes, or else you'd need to upload the additional filing fees via our TEAS System.
Thanx.
/Elissa Garber Kon/
Attorney, Law Office 106
phone: (571) 272-9181
fax: (571) 273-9181
email: elissagarber.kon@uspto.gov
From: Gibbons, Sarah E [mailto:SEGibbons@DIRECTV.com]
Sent: Tuesday, January 18, 2011 4:37 PM
To: Kon, Elissa Garber
Subject: RE: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738Hi Elissa,
Thanks for your patience. Finally feeling my normal self and had a chance to go over this in detail with a clear head!
Let me know if you’d like to discuss it again over the phone. I basically moved a few of the statements you made around to more accurately describe each of our interactive programming channels. The way you had it drafted sounded like multiple interactive functionalities were available on a singular channel, when in fact there are a number of “interactive” channels that each offer different interactive functions in connection with the type of programming on that channel (news v. ratings v. geographically based news&info). I don’t think I made any actual changes to the language, just rearranged a bit. And then, I proposed to move another service into 38 because as I thought about it, I think it belongs there for the same reason you suggested our “media share” services do.
So, here goes, my changes in red. If this makes sense to you I’d like to get final approval from my boss before entering it on record. Thanks again!
Class 41: Distribution of television programs for others; television programming; programming on a global computer network; entertainment services, namely, providing ongoing television programs featuring music, musical entertainment, information about music and entertainment in the field of music, all via satellite; providing on-line interactive computer databases in the field of entertainment information featuring television programming lists, program schedules and program- related information; providing on-line interactive computer databases featuring entertainment information and schedules about television programming, movies, and other digital images, audio, video and other multimedia materials; Entertainment services, namely, providing on-line computer games; providing computer games via satellite transmission; providing a computer game for use network-wide by network users; Entertainment services, namely, providing ongoing television programs featuring general news and local news that also include interactive functions that permit viewers to view multiple images and sources of television programming simultaneously; Entertainment services, namely, providing ongoing television programs featuring general news and local news as well as a variety of information of interest to specific geographic areas that also include interactive components that let viewers choose what to watch at various times, to obtain information about popular programs in their local viewing area and to more narrowly define the types of related information they receive and programs they view; Entertainment services, namely, ongoing television programs in the field of geographical, categorical, real-time programming ratings that also include interactive components that let viewers more narrowly define the types of related information they receive and programs they view; Entertainment services, namely, providing ongoing television programs featuring general information relating to satellite television service, satellite television equipment and hardware, satellite television programming and audio, visual and other multimedia content that also include interactive components that allow users to define their viewing preference; On-line, nondownloadable newsletters featuring general information relating to entertainment, namely, television, movies and other multimedia entertainment-related content; On-line, nondownloadable newsletters featuring general information relating to satellite telecommunication services and satellite telecommunications hardware; (delete the following because it is already listed above--"providing on-line non-downloadable newsletters" – yes, OK.)
and then, move to Cl. 38:
Satellite television broadcasting services that also include interactive television viewing functions that permit viewers to view and use computer applications simultaneously while viewing television programming,
satellite television broadcasting services that also include interactive television viewing functions that permit users to view and share audio files, video files, photographs, images and other multimedia content between and among computers, set-top boxes, and other audiovisual devices (this is what you had suggested, below, we move to 38 and I’m thinking the above in red also belongs there for the same reason you gave re: broadcasting v. entertainment service)
From: Kon, Elissa Garber [mailto:ElissaGarber.Kon@USPTO.GOV]
Sent: Friday, January 14, 2011 12:26 PM
To: Gibbons, Sarah E
Subject: RE: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738
Sure, Sarah, Monday or Tuesday would be ok. I think there are a few marks with what appear to be the same Class 41 ID, so if whatever changes we agree upon apply to all of them, just let me know and I"ll be sure to enter the ID for all of them.
Glad you are feeling better--I don't know which is worse, feeling sick or feeling useless to do anything while I'm sick.
don't over due it your first day back ;)
/Elissa Garber Kon/
Attorney, Law Office 106
phone: (571) 272-9181
fax: (571) 273-9181
email: elissagarber.kon@uspto.gov
From: Gibbons, Sarah E [mailto:SEGibbons@DIRECTV.com]
Sent: Friday, January 14, 2011 12:46 PM
To: Kon, Elissa Garber
Subject: RE: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738Dear Elissa,
I am finally back in the office feeling better – lesson learned on not getting a flu shot.
Anyhow, I believe the below generally sounds good, but I’d like a day or two to go over it with my boss and make sure he is on board. Is that OK? Or is there a time limit by which you’d like our feedback in order to prevent having to issue another action?
I will really try to get to this today if that helps. But if I could have Monday to go over it that would be ideal (for me J)
Thanks again,
Sarah
From: Kon, Elissa Garber [mailto:ElissaGarber.Kon@USPTO.GOV]
Sent: Monday, January 10, 2011 4:27 PM
To: Gibbons, Sarah E
Subject: IT'LL CHANGE YOUR LIFE Trademark Serial No. 77947738
Dear Sarah
I just received your response in the above-referenced application. While I did not compare the ID's word for word, I believe that the ID issues are the same as outlined below. Therefore, please let me know if the proposed changes below are acceptable for this application as well. Thank you.
/Elissa Garber Kon/
Attorney, Law Office 106
phone: (571) 272-9181
fax: (571) 273-9181
email: elissagarber.kon@uspto.gov
From: Kon, Elissa Garber
Sent: Monday, January 10, 2011 9:20 AM
To: 'Gibbons, Sarah E'
Subject: FW: ANYTIME ANYPLACE...Trademark Serial No. 77947762Dear Sarah
Thank you for calling me Friday about this Class 41 application. In light of your very helpful clarification as to the nature of these services, I propose the following amendments. I have highlighted my proposed changes for your convenience:
Class 41: Distribution of television programs for others; television programming; programming on a global computer network; entertainment services, namely, providing ongoing television programs featuring music, musical entertainment, information about music and entertainment in the field of music, all via satellite; providing on-line interactive computer databases in the field of entertainment information featuring television programming lists, program schedules and program- related information; providing on-line interactive computer databases featuring entertainment information and schedules about television programming, movies, and other digital images, audio, video and other multimedia materials; Entertainment services, namely, providing on-line computer games; providing computer games via satellite transmission; providing a computer game for use network-wide by network users; Entertainment services, namely, providing ongoing television programs featuring general news and local news as well as a variety of information of interest to specific geographic areas that also include interactive functions that permit viewers to view and use computer applications to enable them to view multiple images and sources of television programming simultaneously while viewing television programming, to choose what to watch at various times and to obtain information about popular programs in their local viewing area ; Entertainment services, namely, ongoing television programs in the field of geographical, categorical, real-time programming ratings that also include interactive components that let viewers more narrowly define the types of related information they receive and programs they view; Entertainment services, namely, providing ongoing television programs featuring general information relating to satellite television service, satellite television equipment and hardware, satellite television programming and audio, visual and other multimedia content that also include interactive components that allow users to define their viewing preference; On-line, nondownloadable newsletters featuring general information relating to entertainment, namely, television, movies and other multimedia entertainment-related content; On-line, nondownloadable newsletters featuring general information relating to satellite telecommunication services and satellite telecommunications hardware; (delete the following because it is already listed above--"providing on-line non-downloadable newsletters")
The following wording sounds more like a Class 38 broadcasting service: "Entertainment services, namely, providing interactive functions in television viewing that permit users to view and share audio files, video files, photographs, images and other multimedia content between and among computers, set-top boxes, and other audiovisual devices." This does not sound like an entertainment service because you are not providing entertainment content, but rather, satellite transmission services that have special interactive features. If you are aware of another company that provides similar services, please let me know and I will look up their registration[s] to see how they have been described.
For that one, I propose the following:
satellite television broadcasting services that also include interactive television viewing functions that permit users to view and share audio files, video files, photographs, images and other multimedia content between and among computers, set-top boxes, and other audiovisual devices, in Class 38
/Elissa Garber Kon/
Attorney, Law Office 106
phone: (571) 272-9181
fax: (571) 273-9181
email: elissagarber.kon@uspto.gov