UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/270371
APPLICANT: Classmates Online, Inc.
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CORRESPONDENT ADDRESS: Richard Nessary WILSON SONSINI GOODRICH & ROSATI 650 PAGE MILL RD PALO ALTO CA 94304-1050
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom105@uspto.gov
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MARK: CLASSMATES
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CORRESPONDENT’S REFERENCE/DOCKET NO: 22375-TM1016
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/270371
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Trademark Manual of Examining Procedure Section 704.01, (3rd Edition January 2002).
Disclaimer of Descriptive Wording.
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
The applicant’s recitation of goods and services is broad enough to include tapes, recordings, DVDs, CDs, other types of recordings, television series and entertainment via a global communications network as well as production of films and programs all about and featuring classmates.
If the applicant’s goods feature programs, films and entertainment about classmates then the term CLASSMATES describes this feature or characteristic of the goods and is descriptive under Section 2(e)(1) of the Trademark Act and must be disclaimed. In addition, if the applicant’s services feature programs, films and entertainment about classmates then the term CLASSMATES describes this feature or characteristic of the services and is descriptive under Section 2(e)(1) of the Trademark Act and must be disclaimed. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1208.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use CLASSMATES apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
The applicant must also respond to the following informalities.
International Class 9
The applicant must clarify the identification of goods by indicating the type of “audio recordings” e.g., audio cassettes, audio discs, and the type of “audiovisual recordings,” e.g., software, CD- ROMs, DVDs and indicate the subject matter on the audio recordings, video recordings and audiovisual recordings. TMEP §1402.01.
The applicant must also indicate the media on which the television and motion pictures are recorded, e.g., by identifying these particular goods as “pre-recorded CDs, video tapes, laser disks and DVDs featuring television programs and motion pictures.”
The wording “providing databases of personal contact and biographical information via communications networks” in the identification of services needs clarification because the applicant must provide the purposes for the provision of these databases, such as “for telemarketing purposes”. Applicant may change this wording to “providing databases of personal contact and biographical information for telemarketing information via communications networks,” if accurate. TMEP §1402.01.
The wording “dissemination of advertising for others” in the identification of services needs clarification because the applicant must specify the means of dissemination. Applicant may change this wording to “dissemination of advertising for others via Internet,” if accurate. TMEP §1402.01.
The wording “promoting the sale of goods and services of others by means of a preferred customer program” in the identification of services needs clarification because the applicant must specify further the nature of the “preferred customer program”. Applicant may change this wording to “promoting the sale of goods and services of others by means of a preferred customer program featuring ________________________ (please specify),” if accurate. TMEP §1402.01.
The wording “providing electronic communication services” in the identification of services needs clarification because the applicant must specify further the type and nature of these services. Applicant may change this wording to “communication services, namely, providing electronic transmission of data and documents,” if accurate. TMEP §1402.01.
The wording “providing electronic messaging services” in the identification of services needs clarification because the applicant must indicate the means of messaging. Applicant may change this wording to “providing electronic web messaging services,” if accurate. TMEP §1402.01.
The wording “providing electronic bulletin boards and chat rooms” in the identification of services needs clarification because the applicant must describe further the nature of the services. Applicant may change this wording to “providing electronic bulletin boards and chat rooms for transmission of messages among computer users,” if accurate. TMEP §1402.01.
The wording “providing information in the fields of relationships, personal introductions, family, military, workplace, educational institutions, affinity groups, romance, friendship, and reunions” in the identification of services needs clarification because the applicant must state the purpose of the information. It cannot be all classified under “entertainment and educational services” unless the applicant specifies further the purpose of the information. Information services are classified according the classification of the subject matter. Applicant may add International Class 45 to the application and change this wording to “computer dating services, namely, providing information in the fields of relationships and personal introductions, in International Class 45” if accurate. TMEP §1402.01. See below for adding classes.
The wording “television programming” in the identification of services needs clarification because the applicant must describe further the nature of the services. Applicant may change this wording to “television programming, namely, scheduling of television programs,” if accurate. TMEP §1402.01.
The wording “television programming in the nature of a television series” in the identification of services needs clarification because the applicant must specify further the nature. Applicant may change this wording to “entertainment in the nature of on-going television programs in the fields of ________________ (please specify subject matter of the programs)” if accurate. TMEP §1402.01.
The wording “providing a wide range of information, data, sound, images, and video pertaining to relationships, personal introductions, family, military, workplace, educational institutions, affinity groups, romance, friendship, and reunions, all via communications networks” in the identification of services needs clarification because the applicant must state the purpose of the information. It cannot be all classified under “wide range of information, data, sound, images, and video” unless the applicant specifies further the purpose of the information. Information services are classified according the classification of the subject matter. Applicant may add International Class 45 to the application and change this wording to “computer dating services, namely, providing information in the fields of relationships and personal introductions, in International Class 45” if accurate. TMEP §1402.01. See below for adding classes.
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
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 with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.0
Claim Ownership of Prior Registration.
It appears that the applicant owns U.S. Registration Nos. 2584325, 2690035, 2758007 and 2755056. The applicant will submit the following claim of ownership: The applicant is the owner of U.S. Registration Nos. 2584325, 2758007and others.
Identification of a registration is necessary because the registration would, if not owned by the applicant, be a proper reference and basis for refusal under §2(d) of the Act.
37 C.F.R. Section 2.36; TMEP section 812.
Responding to this Office Action.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
Effective January 1, 2002, the 8th edition of the Nice Agreement governing the classification of goods and services divided prior International Class 42 into four service mark classes. Information about revised International Class 42 and new International Classes 43, 44, and 45 is available at www.gov.uspto.report/web/offices/tac/notices/notices.htm.
All applications filed on or after January 1, 2002, must comply with the new classification schedule. For applications filed before January 1, 2002, the new classification schedule is optional. Applicants opting to amend to the new schedule must advise the assigned Examining Attorney.
Applicants may now file changes of correspondence via a new form on TEAS. Address changes may be performed on up to 20 cases at a time. The Trademark Office strongly encourages applicants to use this time-saving form, which is available online at: www.gov.uspto.report/web/trademarks/tmchangeaddress.htm.
On April 30, 2002, the Trademark Operation posted an electronic Response to Office Action form on the TEAS (Trademark Electronic Application System) web site. By using this new web-based TEAS form, customers can (1) respond to an Office Action based on an application or Statement of Use; or (2) pay an additional fee after a phone call from the Office, i.e., to enable an Examiner's Amendment. Upon receipt of the electronically-submitted response, the prosecution history will automatically be updated to show "TEAS Response to Office Action received." To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/oa200>>. NOTE: This form cannot be used to respond to any actions from either the Intent-to-Use (ITU) or Post-Registration areas. Forms for that purpose will be available in the future.
On April 30, 2002, the Trademark Operation posted an electronic Preliminary Amendment form on the TEAS (Trademark Electronic Application System) web site. By using this new web-based TEAS form, customers can submit a Preliminary Amendment prior to examination. Upon receipt of the electronically-submitted preliminary amendment, the prosecution history will automatically
be updated to show "TEAS Preliminary Amendment received." To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/pa200>>. NOTE: This form should ONLY be used if an already-filed application has not yet been examined by the Office.
/John D. Dalier/
Trademark Examing Attorney
Law Office 105
(703) 308-9105, ext. 131
FAX (703) 746-3021
ecom105@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.