To: | ZAGTOON (bslonda@nmmlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 79132532 - ZAGTOON - 101293-529 |
Sent: | 2/10/2014 11:18:53 AM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79132532
MARK: ZAGTOON
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: ZAGTOON
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 2/10/2014
THIS IS A FINAL ACTION.
INTERNATIONAL REGISTRATION NO. 1166443
This responds to applicant’s communication dated December 5, 2013, wherein applicant 1) clarified its citizenship; 2) addressed the examining attorney’s significance inquiry; and 3) amended its identification of goods and services. Nos. 1 and 2 are acceptable and have been entered into the application record. For the reasons set forth below, the requirement for an acceptable identification of goods and services is continued and made FINAL, in part:
IDENTIFICATION OF GOODS AND SERVICES - IN PART
THIS PARTIAL FINAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Accordingly, applicant must correct or delete the relevant passages requiring additional detail. In particular:
Class 9:
The wording “audio and video recordings featuring (specify subject matter, e.g., music, comedy performances, children's animation)” must be amended to replace the parenthetical language with specific wording indicating the subject matter of applicant’s recorded goods.
Applicant may substitute the following wording, if accurate: “audio and video recordings featuring music, comedy performances, and children's animation”.
The remainder of the amended Class 9 identification is acceptable.
Class 38:
Acceptable as amended.
Class 41:
1. The wording “Educational services, namely, providing classes, seminars, workshops in the fields of indicate subject matter or fields of entertainment” must be clarified to delete extraneous language (e.g., “indicate subject matter”) and to specify recognizable fields of study. In this regard, the term “entertainment” is insufficient to indicate the subject matter of the services because it could encompass an overly broad range of pursuits. Applicant must clarify the wording accordingly, e.g., “Educational services, namely, providing classes, seminars, workshops in the fields animation and video production”.
2. Similarly, the wording “Training services in the field of entertainment” remains indefinite because the field of training is not sufficiently specific. The amended wording could encompass a broad range of entertainment related topics, including those potentially unrelated to applicant’s actual field. Applicant must clarify the wording accordingly, e.g., “training services in the field of entertainment, namely, animation and video production”.
The remainder of the amended Class 41 identification is acceptable.
Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods or broadening the scope of the goods/services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.
Moreover, the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).
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.
RESPONDING TO A FINAL OFFICE ACTION
Applicant must respond within six months of the date of issuance of this final Office action or the following goods and/or services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: The wording “audio and video recordings featuring (specify subject matter, e.g., music, comedy performances, children's animation)” in Class 9; "Educational services, namely, providing classes, seminars, workshops in the fields of indicate subject matter or fields of entertainment,” in Class 41; and “Training services in the field of entertainment,” in Class 41. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the remaining goods and services.
Applicant may respond by providing one or both of the following:
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
/SMP/
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.