Offc Action Outgoing

This action addresses applicant’s June 11, 2007 response to the December 8, 2006 office action (“office action). The office action required that the applicant amend its identification of goods, clarify its entity designation, and provide a certificate of registration. Applicant has clarified its entity designation, however, the remaining issues remain unsatisfied. In particular, while the applicant has attempted to amend its identification of goods and services, the services remain unacceptable. In addition, the submitted foreign registration merely is a copy of data from a trademark database, but must be a copy of the actual registration. As a result, the identification of goods and services and requirement to provide a foreign registration is hereby continued and made MAINTAINED.

Identification of Goods

Applicant’s description of goods, “mark” is unacceptable because it is indefinite. §1402.1.

Applicant’s Current Identification Of Goods

Class 009: downloadable electronic publications in the nature of newsletters and magazines about sports, sporting activities, professional and amateur sports persons; graduated rulers

Class 016: printed matter, namely, bulletins, directories, pamphlets and guides, all with information for educational and recreational purposes, guides for entertainment and recreational purposes, newsletters, official programs, press releases, printed matter for recording information, printed matter relating to data communication and conferencing publications, program guides, record books, reports, review; publications, namely magazines, newsletters, directories, pamphlets and books, all featuring sports, sporting activities, information on professional and amateur sports persons and advertisements of others; blank paper and cardboard for recording computer programs recorded on paper or cardboard; graphic art reproductions and representations; graphic prints; calendars; stationery, namely office stationery; ungraduated rulers; posters; pictures; mouse pads; greeting cards; writing instruments; notebook paper; boxes of paper or cardboard; advertisement boards, namely signs of paper or cardboard

Class 038: communication services, namely electronic transmission of data, news reports and advertisements of others concerning information about sports, sporting activities, professional and amateur sports persons; broadcasting services, namely, electronic transmissions, radio, cable and television; computer aided transmission of electronic messages and images; electronic message sending; electronic communication services, namely, for the transmission of data and documents among users to computers concerning information about sports, sporting activities, professional and amateur sports persons; telecommunication services, namely, local and long distance transmission of voice, data, graphic by means of telephone, telegraphic, cable and satellite transmissions; communications by computer terminals

Class 041: electronic publishing services, namely, publication of text and graphic works of others on CDs, DVDs, online, and online CDs and online DVDs, all featuring information about sports, sporting activities, professional and amateur sports persons; publishing and distribution of newsletters, books, magazines, and electronic publications

Class 042: providing online non-downloadable software to access online information and communication services; consultancy in the field of providing access to online information and communication services

Applicant must clarify the identification of goods and services as follows. TMEP §1402.01

(1) Applicant has listed any printed matter within the scope of printed matter and chosen not to individually list newsletters, directories, and magazines. Please note that if the applicant lists printed matter, the common commercial names for the printed matter must be included along with the subject matter and/or field of the printed matter. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

(2) “Ungraduated rulers” is beyond the scope of the original identification and must be removed.

(3) Transmission of “advertisement” is a class 035 service and is therefore misclassified in class 038.

(4) “Consultancy in the field of proving access to online information and communication services” is misclassified, indefinite, and within multiple classes.

(5) Clarify the blank paper and cardboard for recording on computer programs because the latter portion of the id is not clear. Applicant may choose to remove the wording or provide a more concise identification.

Suggested Acceptable Identification Of Goods

Applicant may adopt the following, if accurate.

Class 009: Downloadable electronic publications in the nature of newsletters and magazines about sports, sporting activities, professional and amateur sports persons; graduated rulers

Class 016: Printed matter, namely, bulletins, directories, pamphlets and guides, all featuring information for educational and recreational purposes; guides for entertainment and recreational purposes; newsletters, official programs, press releases, featuring {indicate the subject matter or field}; printed matter, namely {specify the common commercial name of the printed matter} for recording information featuring {indicate the subject matter or field}, printed matter, namely {specify the common commercial name of the printed matter} relating to data communication and conferencing; publications, namely {specify the common commercial name for the publication}, program guides, record books, reports, review {indicate the common commercial name or subject or field for the review} featuring {indicate the subject matter or field}; publications, namely magazines, newsletters, directories, pamphlets and books, all featuring sports, sporting activities, information on professional and amateur sports persons and advertisements of others; blank paper and cardboard for recording computer programs; graphic art reproductions and representations; graphic prints; calendars; stationery, namely office stationery; posters; pictures; mouse pads; greeting cards; writing instruments; notebook paper; boxes of paper or cardboard; advertisement boards, namely signs of paper or cardboard

Class 035: Communication services, namely electronic transmission of advertisements of others concerning information about sports, sporting activities, professional and amateur sports persons

Class 038: Communication services, namely electronic transmission of data, and news reports of others concerning information about sports, sporting activities, professional and amateur sports persons; broadcasting services, namely, electronic transmissions, radio, cable and television; computer aided transmission of electronic messages and images; electronic message sending; electronic communication services, namely, for the transmission of data and documents among users to computers concerning information about sports, sporting activities, professional and amateur sports persons; telecommunication services, namely, local and long distance transmission of voice, data, graphic by means of telephone, telegraphic, cable and satellite transmissions; communications by computer terminals; consultancy in the field of providing access to communication services relating to {indicate the subject matter and/or field) .

Class 041: Electronic publishing services, namely, publication of text and graphic works of others on CDs, DVDs, online, and online CDs and online DVDs, all featuring information about sports, sporting activities, professional and amateur sports persons; publishing and distribution of newsletters, books, magazines, and electronic publications

Class 042: Providing online non-downloadable software to access online information and communication services; consultancy in the field of providing access to online information relating to {specify the field or subject matter}.

Please Review The ID Manual For Guidance

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.

Scope Advisory

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.

Classification of Goods

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9, 16, 35, 38, 41, and 42 . 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

Multiple Class 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 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 (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

Certificate of Registration Required – §44(e) Basis

The application does not include a copy of the foreign registration, but instead includes a copy of information from a trademark database. An application filed under Section 44(e) of the Trademark Act must include a true copy, photocopy, certification or certified copy of a foreign registration, or a registered extension of protection of an international registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004 et seq.

Applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01 and 1004. If applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.

Therefore, applicant must submit a copy of the foreign registration in order to satisfy the requirement of Section 44(e). If the foreign certificate of registration is not written in English, applicant must also provide an English translation signed by the translator. See TMEP §§1004.01 and 1004.01(b).

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

/Nakia D. Henry/

Trademark Attorney (Law Office 111)

United States Patent and Trademark Office

Phone: (571) 272-7208

Fax: (571) 273-7208

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.