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:

 

THIS IS A FINAL ACTION

 

The assigned trademark examining attorney has reviewed the applicant’s response dated February 25, 2008 in which the applicant provides an amended identification of goods and services.  The trademark examining attorney accepts the amended identification of services with respect to International Classes 035 and 038, however, International Classes 009 and 041 require further amendment.

  

The trademark examining attorney’s determination with regard to the identification of goods and services is made FINAL.

 

Identification of Goods and Services

 

The identification of goods and services is unacceptable as indefinite because certain wording in International Classes 009 and 041 is indefinite and must be clarified because it may fall outside of the identified class.  TMEP §§1402.01 and 1402.03. 

 

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and/or services in the corresponding international registration.  TMEP §§1401.03(d) and 1904.02(b). 

 

Therefore, any modification to this wording must identify goods and services in International Classes 009 and 041, respectively, the classifications specified in the application for these goods and services. 

 

The following substitute wording is suggested, if appropriate:

 

Computer software for digital distribution of music¸ namely, {specify common commercial name for “digital distribution”, e.g., “processing digital music into downloadable products”, etc.} computer software for other entertainment activities¸ namely, computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use} computer software for meetings¸ namely, computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}, computer software for chat¸ namely, computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; computer game programs; prerecorded CDs featuring music.  International Class 009;

 

International Classes 035 and 038 is acceptable as provided.

 

Entertainment, namely, providing a website featuring music {specify nature of music, e.g., “prerecorded music”, “musical videos”, etc.} and film {specify type of film, e.g., “film clips”, “prerecorded films” etc.} online via a global computer network; providing gaming online, namely, {the term “gaming” can signify either online computer games and/or casino games, please specify, e.g., “online gaming machines in the nature of a computerized video craps game table” and/or “providing online computer games”};  music production; providing online information about music, entertainment and gaming in the nature of {specify casino and/or computer game programs}; providing online computer games; rental of films, video and[/“or” is indefinite] computer games and music via the Internet.  International Class 041.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited 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://tess2.gov.uspto.report/netahtml/tidm.html.

Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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.

 

 

 

 

 

 

 

 

/Scott Sisun/

Trademark Examining Attorney

Law Office 110

(571)272-5493

 

 

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 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.