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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 1/10/2017

 

This Office action is in response to applicant’s communication filed on December 20, 2016.

 

In the Office Action dated July 5, 2016, 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 wording in the proposed amendments with respect to the identification of goods and services cannot be accepted because some of the wording remains indefinite and requires further clarification.  In addition, some of the proposed wording is not acceptable because it exceeds the scope of the identification in the application, as amended on September 17, 2015.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07. 

 

For example, the software in Class 009 previously read as follows:  “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.”  Now, the current identification of goods as amended on December 20, 2016 reads:  “smart phone and downloadable software for searching, accessing, viewing, downloading, and sharing digital content; computer game software; computer software for searching, accessing, viewing, downloading, and sharing digital content.”

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d). 

 

The following suggested identification contains further guidance in bold and/or brackets.  Applicant may adopt any or all of the suggestions in bold and/or brackets so long as they are accurate. If applicant does not adopt a suggestion, then applicant must amend the identification so that it is as specific as the suggestions and language found in the Manual of Acceptable Identifications of Goods and Services which is located at: http://tess2.gov.uspto.report/netahtml/tidm.html

Applicant should note that the braces-brackets indicate where applicant must insert specific types of goods or services.  The braces should NOT appear in the amended identification; only the specific goods or services inserted by applicant.  Applicant need not amend identifications other than where specified. 

 

The examining attorney addresses each class in turn, with strike-through lines in the wording that is not acceptable because it is (1) indefinite, or (2) a broadening of the scope of goods or services as per the prior amendments. 

 

Class 009

 

The proposed amended identification of goods now reads:

 

• Cinematographic and photographic films featuring subjects of general human interest; sound and video recordings featuring subjects of general human interest; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers; smart phone and downloadable software for searching, accessing, viewing, downloading, and sharing digital content; computer game software; computer software for searching, accessing, viewing, downloading, and sharing digital content.

 

Applicant must indicate the subject matter of the films and videos.  In addition, as stated above, the computer software is limited to the identification of goods as per the prior amendments.

 

The following is suggested:

 

• Cinematographic and photographic films featuring {INDICATE SUBJECT MATTER, E.G., drama, comedy, children’s entertainment}; sound and video recordings featuring {SPECIFY, E.G, dramas, comedy, children’s entertainment, etc.}; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers; downloadable 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

 

Class 016

 

The proposed amended identification of goods now reads:

 

• Printed matter, namely, books, periodicals, booklets, magazines, monographs, instructional and teaching materials in the field of entertainment; calendars; diaries; posters; stationery; office requisites, namely, notebooks and paper and plastic bags; pens; pencils; erasers; greetings cards; artists' materials, namely, stencils, crayons, markers, and paper; paint brushes; postcards; stickers

 

The wording indicated above is unacceptable as indefinite because the word “entertainment” is extremely broad, but fails to indicate a specific subject matter.  In addition, the word “entertainment” was not indicated in previous identifications of goods in Class 016.  The examining attorney notes that the previously indicated fields of “comedy” and “film” would be acceptable because these subjects would fall under the umbrella of “entertainment.”  Applicant should note that the word “music” was not included in the suggestion below because of the subject matter indicated in Registration No. 4181171
 

Therefore, the following is suggested:

 

• Printed matter, namely, books, periodicals, booklets, magazines, monographs, instructional and teaching materials in the field of comedy and film: calendars; diaries; posters; stationery; office requisites, namely, notebooks and paper and plastic bags; pens; pencils; erasers; greetings cards; artists' materials, namely, stencils, crayons, markers, and paper; paint brushes; postcards; stickers

 

Class 038 is acceptable as amended.

 

Class 041

 

The proposed identification of services now reads:

 

• Entertainment services in the form of ongoing television programs, radio programs, and cable programs in the field of general human interest; production and presentation of television and radio programs, shows, films, videos and DVDs; distribution and syndication of television and radio programs and films; distribution and rental of sound recordings, video recordings and DVDs; publication of printed matter and electronic publications; organization, production and presentation of audience competitions, contests, games, game shows, quizzes, and exhibitions for cultural or educational purposes; entertainment services, namely, audio and video recording services, dubbing, subtitling, digital imaging, recorded sound and image editing, movie studios services, rental of audio and lighting equipment for television and film production, production of special effects for television and films, and animation services; information and advisory services relating to any of the aforesaid services

 

Some of the wording above is unacceptable because it is (1) indefinite, or (2) includes wording not included in the previous identification of services.  For example, applicant must indicate with specificity the subject matter of the ongoing shows.  In addition, wording such as “publication of printed matter and electronic publications” must be limited to the publications indicated in the previous amendments.  Furthermore, wording such as “dubbing, subtitling, digital imaging, editing, movie studio services, rental of audio and lighting equipment” must be deleted because such wording references services not previously included in the identification of services.

 

The following would be acceptable:

 

• Entertainment services in the form of ongoing television programs, radio programs, and cable programs in the field of {SPECIFY, E.G, children’s entertainment, comedy, drama, horror}; production of television and radio programs, film and video production, and production of DVDs featuring {SPECIFY, E.G., children’s entertainment, etc.}; distribution of television and radio programs and films; distribution and rental of sound recordings, video recordings and DVDs; publication of printed matter and electronic publications, namely, newspapers, magazines, brochures, and guidebooks; organization, production and presentation of audience competitions, contests, games, game shows, quizzes, and exhibitions for cultural or educational purposes; information and advisory services relating to any of the aforesaid services

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

Refusals Withdrawn:

 

• Section 2(d) Likelihood of Confusion Refusal – Registration No. 2879305

 

Requirements Maintained and Continued:

 

• Foreign Registration Required
• Section 2(d) Likelihood of Confusion Refusal – Registration No. 4181171

 

/CarynGlasser/

Trademark Examining Attorney

Law Office 105

Phone:  (571) 270-1517

Fax:  (571) 270-2517

caryn.glasser@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/10/2017 FOR U.S. APPLICATION SERIAL NO. 85785725

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/10/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.