UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE:  NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 1/5/2012

 

The office received Applicant’s Response to Office Action on December 8, 2011, in which the Identification of Goods and Services requirements for Classes 9 and 38 requirements have been satisfied and are now withdrawn 

 

Subsequent to the Applicant’s arguments and evidence presented in favor of registration, the Trademark Act Section 2(d) refusal(s) regarding Registration Nos.  3039734, 3424094, 3773158 and 3868059 are withdrawn.  Additionally, the prior pending application advisories regarding serial numbers 77594767, 85144753 (Abandoned) and 85228609 (now registration No. 4015747) are withdrawn as well, and are therefore no longer a bar to registration of Applicant’s mark.

 

The Trademark Act Section 2(e)(1) Merely Descriptive and Trademark Act Section 2(d) refusal regarding Registration No. 3018910 and Recitation of Services Requirement for Class 41 are maintained and continued.  The Examining Attorney will reserve the opportunity to respond to the Applicant’s arguments and evidence regarding these refusals at a later date.

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application.  If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application(s) was sent previously.

 

            - Application Serial No(s). 77656861

 

 

Recitation of Services Requirement – Class 41 Only

 

The wording “pay-per-view programming” in the identification of services must be clarified because it is overly broad and should clearly indicate “television” services.  See TMEP §§1402.01, 1402.03. 

Applicant may substitute the following wording, if accurate: 

 

 

Distribution of television programs for others; television programming; programming on a global computer network of television programming; pay-per-view television programming; video-on-demand television programming; providing on-line interactive computer databases featuring television programming lists, and schedules; providing on-line interactive computer databases featuring information about television shows, movies and other digital images, audio, video and other multimedia content, all in the field of entertainment; providing a website featuring information about television programming.

 

 

 

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.

 

 

 

Identifications of services can be amended 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.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

 

/Thomas M. Manor/

Trademark Examining Attorney

Law Office 110

Phone :  (571) 270-1519

Fax. No. (571) 273-9110

Thomas.Manor@USPTO.GOV

 

 

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/trademarks/teas/correspondence.jsp.

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO LETTER (AN OFFICE ACTION) HAS ISSUED ON 1/5/2012 FOR

SERIAL NO. 85308397

 

Please follow the instructions below:

 

TO READ OFFICE LETTER: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office letter

 

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

HELP: For technical assistance in accessing the Office correspondence, please e-mail TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office letter.