UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/576598

 

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

 

SEARCH

 

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

 

IDENTIFICATION OF GOODS/RECITATION OF SERVICES

 

The current wording used to describe the goods and/or services needs clarification because it is too broad and/or indefinite.  Applicant may substitute the following if accurate.  TMEP §§1402.01 and 1402.03.

 

            International Class 009: Sound recordings, namely PHONOGRAH records, PRE-RECORDED AUDIO tapes, PRE-RECORDED CD’s, and DIGITAL audio files FEATURING vocal and musical performances; video recordings, namely PRE-RECORDED VIDEO cassettes, PRE-RECORDED DVD’s and DIGITAL video files FEATURING vocal and musical performances.

 

International Class 041: Entertainment services, namely, live musical and vocal performances BY A MUSICAL GROUP.

 

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://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please note that, while the identification of goods/recitation of services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification/recitation to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification/recitation.

 

SPECIMEN DOES NOT SHOW USE OF THE MARK WITH SPECIFIED SERVICES IN INTERNATIONAL CLASS 041

 

Applicant must submit a substitute specimen showing use of the mark for the services specified in the application, because the specimen currently of record does not show use of the mark for any services identified in the application.  37 C.F.R. §2.56; TMEP §§904 and 904.01 et seq..  Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The current specimen of record comprises the back cover of a compact disc and is an unacceptable specimen for applicant’s services, because it does not show use in commerce of the mark, NPG RECORDS, in the sale or advertising of applicant’s entertainment services.  Specifically, the back cover of the compact disc makes no reference to the identified services, namely, “live musical and vocal performances.”  

 

Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

If applicant cannot comply with the specimen requirement for the 1(a) use of the mark in commerce basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert a 1(b) bona fide intention to use the mark in commerce basis.  Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

 

Trademark Act Section 1(b), 15 U.S.C. § 1051(b).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R, §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.

 

DISCLAIMER

 

Applicant must disclaim the descriptive wording “RECORDS” apart from the mark as shown because it immediately names and merely describes a feature and function and/or purpose of applicant’s goods and services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The term RECORD is defined as a “piece of music in a format that can be listened to repeatedly.”  Please refer to the attached on-line dictionary evidence, which confirms the descriptive significance of the wording “RECORDS” in the applied for mark in relation to applicant’s sound and video recordings and live musical and vocal performances.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

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

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  The appearance of the applied-for mark does not change.

 

 

 

 

/Mariam Aziz Mahmoudi/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 112

Tel. (571) 272-9733

Fax (571) 273-9733

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.