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: 7/31/2013

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified as noted.  See TMEP §1402.01.  The underlined services are acceptable as filed.  The remaining services require further amendment as noted.

 

Applicant may adopt the following identification, if accurate:

 

“Distributorship services featuring DVDs, video recordings, musical video recordings, sound and visual recordings,” in Class 35;

 

“Distribution” involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. This is not the case when distribution relates to videotapes, audio tapes or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer. For this reason, distribution of videotapes, audio tapes, video disks, etc. should not be accepted as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in Class 41.

 

“Entertainment services, namely, [specify, e.g., providing live music]; educational services, namely, conducting classes and seminars in field of [specify, e.g., languages]; providing non-downloadable films and television programs and programming via a video-on-demand service; entertainment services in the nature of development, creation, production, post production and distribution services of films, movies, television programs, television programming and multimedia entertainment content; entertainment services in the nature of development, creation, production, and post production of DVDs; animation production services; entertainment services in the nature of production of musical records and musical programs; entertainment services in the field of film and television, namely, the creation, production and distribution of films, television programs and programming, television series, animated programming, and programming featuring computer generated images; production and rental of sound and visual recordings; production of live-action and animated entertainment shows and interactive programs for distribution via audio and visual media, and electronic means; production and provision of entertainment news and entertainment information via communication and computer networks; providing entertainment services via the internet, electronic communications networks, computer networks and wireless communications networks in the nature of online games and websites featuring a wide variety of general interest entertainment information relating to motion picture films, television programs and programming, television series, videos, musical videos, animation, related film clips, photographs, graphics and other multimedia materials;  theater productions; computer animated and special effects production services; rental of videos, music videos, musical recordings and multimedia content in the field of entertainment and education; rental and distribution of motion picture films, television programs, radio programs, animation programming in the fields of entertainment and education; providing information, namely, ratings, reviews and recommendations of users on events and activities in the field of entertainment and education via the internet, electronic communications networks, computer networks and wireless communications networks; entertainment services in the nature of providing non-downloadable entertainment programs and content, namely, motion picture films, television programs featuring [specify content], television programming, television series featuring [specify content], non-downloadable videos featuring movies and television programs, non-downloadable music videos, animated programming, and related non-downloadable movie and television programming clips, graphics, and multimedia content and related information in the fields of drama, action, comedy, sci-fi, animation, music, musicals, news, variety, adventure, sports, current events and documentary, via the internet, electronic communications networks, computer networks and wireless communications networks; entertainment and educational services, namely, providing non-downloadable motion picture films, television programming, non-downloadable television series featuring [specify content], non-downloadable videos featuring films and television programming, non-downloadable music videos, non-downloadable animated programming, non-downloadable musical recordings, radio programming and non-downloadable multimedia content in the fields of entertainment and education; providing online information in the field of entertainment concerning television, motion picture films, video, music video, animation and radio programs; premium and pay television entertainment services, namely, [specify, e.g., providing television news shows]; premium and pay television programming services; premium or pay television services, namely, production and distribution of television programs and motion pictures rendered through the media of television, cable and satellite systems, and the Internet; educational services, namely, an educational initiative providing educators with pay or premium television programming for educational purposes; providing on-line non-downloadable television program magazine; education services, namely, providing classes, seminars and workshops in the fields of film, movies, and television production; entertainment services, namely, personal appearances by a film, movie, television and music celebrities; providing a website featuring entertainment information; providing a website featuring information in the field of film, movies, television shows, and television and film production; on-line journals, namely, blogs featuring articles, posts and information in the field of films, movies, television shows, TV and film production and information about film, movie and television producers and celebrities,” in Class 41. 

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

 

SEARCH RESULTS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

 

 

 

SUMMARY OF ISSUES that applicant must address:

 

• Requirement to amend the recitation of services
• Requirement to comply with multi-class application requirements if additional classes are added

 

 

 

 

/Kathleen M. Vanston/

Examining Attorney

Law Office 107

(571) 272-9235

kathy.vanston@uspto.gov [for informal inquiries only]

 

 

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 7/31/2013 FOR U.S. APPLICATION SERIAL NO. 85900719

 

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 7/31/2013 (or sooner if specified in the Office action).  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 Trademark Electronic Application System (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.