UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
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: 3/20/2015
THIS IS A FINAL ACTION.
On December 11, 2013, action on this
application was suspended pending the disposition of U.S. Application Serial No. 77732363.
The following refusal has been withdrawn: Section 2(e)(1) refusal.
For the reasons set forth below, the refusal under
Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 2879305 and 4181171. See 15 U.S.C. §1052(d); 37 C.F.R.
§2.63(b). In addition, the
following requirements are now made FINAL: acceptable clarification of the identification of goods and services.
See37 C.F.R. §2.63(b).
In addition, the following requirement is now made FINAL: acceptable
identification of goods and services. See37 C.F.R. §2.63(b).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark was refused because of a likelihood of
confusion with the marks in U.S. Registration Nos. 2879305 and 4181171. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01
et seq. See previously enclosed registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be
confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C.
§1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be
considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not
all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Taking into account the relevant du Pont factors, a
likelihood of confusion determination in this case involves a two-part analysis. The marks are compared for similarities in their appearance, sound, connotation and
commercial impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are compared to determine whether they are similar or
commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
In the case at hand, applicant seeks registration of “ITV” in stylized form for “Cinematographic and photographic films featuring dramas, musicals,
sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs,
variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden,
lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; sound and video recordings featuring dramas,
musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television
programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and
garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; audio tapes and video tapes recordings
featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows,
popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial
programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; apparatus for recording,
transmission or reproduction of sound or images; magnetic data carriers; recording discs; apparatus for recording and reproducing sound or images; records, compact and video discs, tapes, cassettes,
cartridges, cards all bearing or for use in bearing sound recordings, video recordings, data, images, graphics, text, programs or information; memory carriers, interactive compact discs, CD-ROMs and
DVDs featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows,
popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial
programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; smart phones and software
relating thereto; WAP phones and software relating thereto; structural parts and fittings for all the aforesaid goods; computer games; Computer game software; Children's educational software;
computer software for entertainment purposes for use in personal computers, laptop computers, personal digital assistants, televisions, MP3 players, smart telephones, tablet computers in the field of
news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel,
environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants,
eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and
financial planning services; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing children's games, electronic children's books,
children's entertainment, and children's educational software; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing computer
games, electronic books, and videos” in Class 009, and
“Entertainment, namely, entertainment services in the form of television, radio, cable, satellite and programs in the field of dramas, horror, musicals,
sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs,
variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden,
lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; entertainment services in the form of ongoing
television programs, radio programs, cable programs, satellite programs and Internet programs in the field of dramas, horror, musicals, sports, music, musical performances, educational programs,
children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult
programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction,
history, historical reenactments, travel, politics, confessionals and fictional programs; production and presentation of television programs, television and internet shows, films, videos and DVDs;
production and presentation of television, radio, cable, satellite and Internet programs; distribution and syndication of television, radio, cable, satellite and internet programs and motion picture
films; rental of films, audio and video tapes and DVDs; educational services relating to entertainment, namely, conducting seminars, conferences and workshops in the field of dramas, horror,
musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television
programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and
garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; providing information relating to
entertainment and education in the fields of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather,
competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films,
culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional
programs provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; publishing, namely, publication of
newspapers, magazines, comics, brochures, guides and books dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries,
the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television
programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics,
confessionals and fictional programs; organization, production and presentation of events for educational, cultural or entertainment purposes; organizing and conducting competitions, contests, games,
game shows, quizzes, fun days, exhibitions, live entertainment shows, roadshows, staged events, raves, theatrical performances, music concerts, live performances and participation events; information
and advisory services relating to any of the aforesaid services” as amended.
The cited mark in Registration No. 2879305 is “ITV” in typed form for “Providing information online in the field of current events and entertainment online
news reporting presentations News analysis and features distribution via the Internet News agencies, namely, gathering and dissemination of news via the Internet, Providing entertainment services,
namely, providing information and links to other websites in the fields of fictional and non-fictional stories, jokes, riddles, art, plays, photographs, and animated images.”
The cited mark in Registration No. 4181171 is “ITV in standard character form for “Providing entertainment and educational services via the Internet or other
communications networks, namely, providing non-downloadable virtual presentations of fictional and non-fictional stories, jokes, riddles, art, plays, photographs, and animated images; providing
information in the fields of current events, music, and sports; entertainment services, namely, providing non-downloadable information in the field of music, and commentary and articles about music;
and providing information, news and commentary in the field of current events, historical events and people.”
Comparison of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and
commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, the word portion of applicant’s mark is ITV and registrant’s marks are ITV. Thus, the marks are identical in terms of appearance and sound. The different stylization of the letters does not obviate the
similarities between the marks. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and
registrant’s respective goods and/or services.
Therefore, the marks are confusingly similar.
Comparison of the Goods and Services
In addition to the marks being virtually identical, the goods
and services are the same and/or highly related. Furthermore, consumers are likely to be confused by the use of similar marks on or in connection with goods and with
services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc.,
229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van
Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services
and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with
CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture,
and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar
marks for trucking services and on motor trucks and buses likely to cause confusion).
Here, both the applicant and registrant provides good and services featuring media such as films, sound and video recordings, tapes, books and printed matter
featuring entertainment such as fictional and non-fictional stories, art, plays, photographs, animated images, music as well as related news, current affairs, history, etc. Therefore, with the contemporaneous use of highly similar marks, consumers are likely to reach the mistaken conclusion that the goods and services are related and originate
from a common source. As such, the refusal to register is made FINAL under Trademark Action Section 2(d).
Clarification of the Identification of Goods and Services
In the Office Action dated May 6, 2013, the examining attorney required the applicant to clarify and amend the goods and services in the application
and the applicant responded with an amended Identification of Goods and Services. The proposed amendments cannot be accepted because some of the wording remains
indefinite and requires further clarification.
Class 009
The proposed amendment reads as follows (bolded, underlined wording requiring clarification):
- Cinematographic and photographic films featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat
shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television
programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science,
science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; sound and video recordings featuring dramas, musicals, sports, music, musical performances,
educational programs, children's programs, factual programs, documentaries, the weather,
competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and
drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature,
science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; audio tapes and video tapes recordings featuring dramas, musicals, sports, music,
musical performances, educational programs, children's programs, factual programs, documentaries,
the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle
and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; apparatus for recording, transmission or reproduction of sound
or images; magnetic data carriers; recording discs; apparatus for recording and reproducing sound or images;
records, compact and video discs, tapes, cassettes, cartridges, cards all bearing or for use in bearing sound recordings, video recordings, data, images, graphics, text, programs or
information; memory carriers, interactive compact discs, CD-ROMs and DVDs featuring dramas, musicals, sports, music, musical
performances, educational programs, children's programs, factual programs, documentaries, the
weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food
and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure,
nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; smart phones and software relating
thereto; WAP phones and software relating thereto; structural parts and fittings for all the aforesaid goods; computer games; Computer
game software; Children's educational software; computer software for entertainment purposes for use in personal computers, laptop computers, personal digital
assistants, televisions, MP3 players, smart telephones, tablet computers in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and
featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research,
computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and
fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; computer application
software for mobile phones and hand held computer devices, namely, software for accessing and playing children's games, electronic children's books, children's entertainment, and children's
educational software; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing computer games, electronic books, and videos
The underlined wording above is unacceptable as indefinite. Some of the wording is indefinite because the subject matter is
not clear. For example, wording such as films, factual programs, culture” require clarification as to the specific subject matter (films featuring drama, comedy,
etc.) Furthermore, some of the wording is unacceptable because it is confusing and requires clarification as well as punctuation. The word “films” standing alone is
indefinite and should be deleted because “films” is already included (cinematographic and photographic films)
Applicant may consider the following:
- Cinematographic and photographic films featuring dramas, musicals, sports, music, musical performances, educational {SPECIFY, E.G., math, history, art} programs, children's programs, factual programs featuring history,
documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas,
adult programming, cooking shows featuring, food and drink, reality television programs,
films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science
fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; sound and video recordings featuring dramas, musicals, sports, music, musical performances,
educational {specify, e.g., math history, art} programs, children's
programs, factual programs FEATURING HISTORY, documentaries, the weather, SPORTS competitions, games
shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking SHOWS FEATURING food and drink, reality television programs, films, pop culture, charity events, financial
programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; audio tapes and video
tape recordings featuring dramas, musicals, sports, music, musical performances, educational {SPECIFY, E.G., art} programs, children's programs,
factual HISTORY programs, documentaries, the weather, SPORTS competitions, games shows, chat shows,
popular television programs, variety, daytime television programs, soap operas, adult programming, cooking SHOWS FEATURING food and drink, reality
television programs, films, POP culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science,
science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; apparatus for recording, transmission or reproduction of sound or images; BLANK magnetic data carriers; BLANK recording discs; apparatus for recording and reproducing sound or images;
memory carriers, NAMELY, interactive compact discs, CD-ROMs and DVDs featuring dramas, musicals, sports, music, musical performances, educational ART
programs, children's programs, factual HISTORY programs, documentaries, the weather, competitions, games shows, chat shows, popular
television programs, variety, daytime television programs, soap operas, adult programming, cooking SHOWS FEATURING food and drink, reality television
programs, POPULAR culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history,
historical reenactments, travel, politics, confessionals and fictional programs; smart phones AND DOWNLOADABLE SOFTWARE APPLICATION FOR DOWNLOADING DVR RECORDED
CONTENT FOR VIEWING; WAP phones and DOWNLOADABLE software FOR DOWNLOADING DVR RECORDED CONTENT FOR VEIWING; computer games; Computer
game software; Children's educational software; computer software for entertainment purposes for use in personal computers, laptop computers, personal digital
assistants, televisions, MP3 players, smart telephones, tablet computers FOR {SPECIFY FUNCTION OF SOFTWARE, E.G., for accessing, searching and viewing content} in
the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events,
arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink,
restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities,
investment and financial planning services; computer application software for mobile phones and hand held computer devices, namely, software for
accessing and playing children's games, ACCESSING electronic children's books, children's entertainment, and children's educational software; computer application software for mobile
phones and hand held computer devices, namely, software for accessing and playing computer games AND ACCESSING electronic books, and videos
NOTE: the wording “records, compact and video discs, tapes, cassettes,
cartridges, cards all bearing or for use in bearing sound recordings, video recordings, data, images, graphics, text, programs or information;” and “structural parts and fittings for all the
aforesaid goods” was not included in the suggestion above, because the wording is too indefinite and vague to ascertain what applicant is referring to.
Class 016
- Books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and
featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research,
computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and
fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; printed matter,
namely, printed periodicals, magazines, newspapers, newsletters, books, directories, supplements, pamphlets, note books, greeting cards, posters, pictures, and prints in the field of news, current
affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment,
books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries,
hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial
planning services; monographs in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial
research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural
matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; photographs; booklets in the field of news,
current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics,
cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision
of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability
insurance, annuities, investment and financial planning services; calendars; diaries; magazines in the field of news, current affairs, broadcasting, advertising, marketing, public
relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television,
games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare,
beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning
services; posters; stationery; office requisites, namely, spiral-bound notebooks, paper and plastic bags, labeling machines, lettering machines, envelope sealing machines, imprinters, and
collators; pens; pencils; erasers; greetings cards; artists' materials, namely, stencils, brushes, crayons, markers, paper, painting pallets, artists pencils; paint brushes; postcards; stickers;
instructional and teaching material, namely, printed teaching materials, course books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing,
new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science
and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening,
veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services
The underlined wording requires deletion of clarification because it is confusing, particularly with the introduction of the wording “and featuring print news, etc. Applicant must simply this wording by specifically stating the subject matter of the printed materials, use the common commercial or generic names for the goods, be as complete
and specific as possible, and avoid the use of indefinite words and phrases. Moreover, applicant should avoid confusing wording such as “books in the field of
books.” “Directories” should be listed separately with a clear indication of the subject matter of the directories, rather than in a string of printed
matter.
Applicant may consider the following:
- Books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video,
film, politics, cultural events, arts, travel, environment, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming,
food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance,
annuities, investment and financial planning services; note books, greeting cards, posters, pictures, and prints; Directories IN THE FIELD OF {SPECIFY,
E.G., hotels, restaurants}; printed matter, namely, printed periodicals, magazines, newspapers, newsletters, books, supplements, pamphlets, in the field of news, current affairs, broadcasting,
advertising, marketing, public relations, publishing, music, comedy, film, politics, cultural events, arts, travel, environment, television, games, sports, science and scientific matters, industrial
research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and
fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; monographs in the field of news, current affairs, broadcasting,
advertising, marketing, public relations, publishing, politics, cultural events, arts, travel, environment, games, sports, science and scientific matters,
industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural
matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; photographs; booklets in the field of news, current
affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, politics, cultural events, arts, travel, environment, games, sports,
science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening,
veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; calendars; diaries;
magazines in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural
events, arts, travel, environment, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink,
restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities,
investment and financial planning services; posters; stationery; office requisites, namely, spiral-bound notebooks, paper and plastic bags, labeling machines, lettering machines, envelope
sealing machines, imprinters, and collators; pens; pencils; erasers; greetings cards; artists' materials, namely, stencils, brushes, crayons, markers, paper, painting pallets, artists pencils; paint
brushes; postcards; stickers; instructional and teaching material, namely, printed teaching materials being course books
in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural events,
arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants,
eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and
financial planning services
Class 038 is acceptable as amended
Class 041
The proposed amended identification of services read as follows:
- Entertainment, namely, entertainment services in the form of television, radio, cable, satellite and programs in the field of
dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular
television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs,
home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; entertainment services in the form of ongoing television programs, radio programs, cable programs, satellite programs and Internet programs in the field of dramas,
horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular
television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs,
home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; production and presentation of
television programs, television and internet shows, films, videos and DVDs; production and presentation of television, radio, cable, satellite and
Internet programs; distribution and syndication of television, radio, cable, satellite and internet programs and motion picture films;
rental of films, audio and video tapes and DVDs; educational services relating to entertainment, namely, conducting seminars, conferences and workshops in the
field of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows,
popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial
programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; providing information relating to entertainment and education in the fields of dramas, horror, musicals, sports, music, musical performances, educational programs,
children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult
programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction,
history, historical reenactments, travel, politics, confessionals and fictional programs provided on-line from a computer database or the Internet or by communications satellite, microwave or other
electronic, digital or analogue media; publishing, namely, publication of newspapers, magazines, comics, brochures, guides and books dramas, horror,
musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television
programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and
garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; organization, production and
presentation of events for educational, cultural or entertainment purposes; organizing and conducting competitions, contests, games, game shows, quizzes, fun
days, exhibitions, live entertainment shows, roadshows, staged events, raves, theatrical performances, music concerts, live performances and participation events; information and advisory
services relating to any of the aforesaid services
The wording underlined in bold, above, requires clarification because it is indefinite and confusing. Notably, applicant has repeated a list of
themes irrespective of the context of the services. In addition, “satellite” is not a type of program, but rather, a means of transmitting a program. Similarly, wording such as “publication or horror, musicals, etc.” is not acceptable because such wording does not make sense. Likewise,
wording such as “films in the field of film” is not acceptable.
Applicant may consider the following suggestion:
- Entertainment, namely, {SPECIFY SERVICES, E.G., PRODUCTION OF} television AND radio
PROGRAMS ACCESSIBLE BY RADIO, TELEVISION AND SATELLITE in the field of drama, horror, musicals, sports, music, musical performances, educational programs, children's
programs, factual CURRENT EVENTS AND HISTORICAL events, documentaries, the weather, SPORTS competitions, game shows, chat shows, variety, daytime soap operas, adult programming, cooking, food and
drink, reality, charity events, finance, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and
fiction; entertainment services in the form of ongoing television programs, radio
programs, cable TELEVISION programs DELIVERY BY TELEVISION, SATELLITE AND THE INTERNET drama, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual
CURRENT EVENTS AND HISTORICAL events, documentaries, the weather, SPORTS competitions, game shows, chat shows, variety, daytime soap operas, adult programming, cooking, food and drink, reality,
charity events, finance, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fiction; Production of television and radio programs; Film and video production; Production of DVD’s
featuring {SPECIFY, E.G., drama, horror, musical performances, children’s programs}; Television, radio program and motion picture film syndication; rental of films, audio and video tapes and
DVDs; Entertainment information; publishing newspapers, magazines, comic books, brochures, guidebooks and books; Entertainment services, namely, conducting contests, production of quiz shows, organizing and conducting {SPECIFY SUBJECT MATTER IN CLASS 041, E..G,
film-making} competitions, Organizing exhibitions for educational, cultural or entertainment purposes}; information and advisory services relating
to any of the aforesaid services
The wording “educational services relating to entertainment, namely, conducting seminars, conferences and workshops in the field of dramas,
horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular
television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs,
home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs” was not included in the
suggestion above, because the nature subject matter of the educational services is not clear. Applicant has provided a list of genre fields, but has omitted what is
being taught within these genres. In addition, some of the wording does not make sense, for example, educational seminars in the field of educational
programs. Applicant may consider eliminating the string of genres names, and provide the subject matter of the educational services (ex: seminars in the art of film making, etc.). In addition, the string of genres was deleted where it was not necessary and confused the nature of the services.
An applicant may only amend an identification to clarify or limit the goods and/or
services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et
seq., 1402.07.
For assistance with identifying and classifying goods and services in trademark applications, please
see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
PROPER RESPONSE TO FINAL REFUSAL
Applicant must respond within six months of the date of issuance of
this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by
providing one or both of the following:
(1) A response that fully satisfies
all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial
and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); 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. 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).
/CarynGlasser/
Trademark Examining Attorney
Law Office 108
Phone: (571) 270-1517
Fax: (571)-270-2517
caryn.glasser@usp
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.