To: | Reed Elsevier Inc. (jacqueline.gregorski@lexisnexis.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85447911 - FLIXTRACKER - N/A |
Sent: | 2/8/2012 2:08:19 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85447911
MARK: FLIXTRACKER
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CORRESPONDENT ADDRESS: REED ELSEVIER INTELLECTUAL PROPERTY MANA |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Reed Elsevier Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 2/8/2012
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes Applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The term “flix” is a novel spelling of the word “flicks”. A “flick” is defined as “a movie”. “Tracker” is defined as “One who observes and follows”. Please see attached evidence for definitions.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services. Specifically, the applied-for mark identifies characteristics or features of the identified services. As the applicant’s website notes:
“FlixTracker plus Email Alerts is a premium development and production tracking resource from Variety Insight designed for the feature film industry. Flixtracker allows users to track development and production across film, television and digital entertainment”.
(See attached website printout from www.flixtracker.com. Emphasis added.)
Applicant must respond to the requirement(s) set forth below.
The wording in the identification of services is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification. Moreover, some of the wording is also too broad and could include services classified in other international classes. Applicant may amend the identification and classification to the following, if accurate. [Changes are noted in bold type.]
“Downloadable electronic publications in the nature of {specify types of publications, e.g., magazines, newsletters} relating to the entertainment industry; downloadable electronic newsletter delivered by email relating to the entertainment industry” [in International Class 009]
“Entertainment business research and business data analysis services in the entertainment and media business including television, feature film and digital entertainment; providing on line news and information about the business of the entertainment industry” [in International Class 035]
“Providing on line news and information in the field of entertainment; non-downloadable electronic publications in the nature of {specify types of publications, e.g., magazines, newsletters} relating to the entertainment industry; on-line electronic newsletter delivered by email relating to the entertainment industry” [in International Class 041]
“Maintaining websites relating to the entertainment industry for others” [in International Class 042].
TMEP §§1402.01 and 1402.03. [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]
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. See TMEP §1402.04.
Examining Attorney
Law Office 110
571-272-5884- Phone
sani.khouri@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.