To: | IMDb.com, Inc. (docket@amazon.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86275018 - IMDB - TMKM3467 |
Sent: | 8/28/2014 4:03:40 PM |
Sent As: | ECOM108@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
U.S. APPLICATION SERIAL NO. 86275018
MARK: IMDB
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: IMDb.com, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 8/28/2014
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.
Office Records Searched
Claim of Ownership of Prior Registrations
Applicant may use the following format to claim ownership of these registrations:
Applicant is the owner of U.S. Registration Nos. 2609882, 2612776, 2730592 and 3936436.
Identification of Services Must Be Clarified – Applies to Specified Services ONLY
Wording in the identification of services is indefinite and must be clarified. See TMEP §1402.01. Please see suggested identification below for specific wording that requires clarification. Applicant may adopt the following identification, if accurate. Please note that bolded wording indicates a suggested addition(s)/amendment(s) to applicant’s current identification and wording with a line through it indicates language of which the examining attorney is suggesting deletion. Please also note that the suggested identification includes an additional international classification and, if applicant adopts this suggested identification, applicant will need to comply with the requirements set forth in the multiple class requirements section below.
Class 35:
“Providing online business directory information, namely, providing information regarding the location/addresses of movie theaters.”
Class 41:
“Entertainment services, namely, providing reviews, news and information in the field of motion picture films, television programs, celebrities, entertainment industry and
entertainment-related topics; providing an online computer database featuring reviews, news, information and content in the field motion picture films, television programs, celebrities, entertainment
industry and entertainment-related topics; movie schedule and location information services; television schedule information services; entertainment in the nature of conducting contests,
competitions and {insert specific type/nature of games, e.g. online computer} games in the field of entertainment; entertainment services, namely, publishing journals and blogs
featuring information and opinions in the field of entertainment; providing on-line newsletters featuring reviews, news and information in the field of motion picture films, television programs,
celebrities, entertainment industry and entertainment-related topics; providing a website with information in the fields of motion pictures, television shows, celebrities, entertainment industry and
entertainment-related topics; entertainment services in the nature of non-downloadable videos featuring information in the fields of motion pictures, television shows, celebrities, entertainment
industry and entertainment-related topics; providing information in the field of movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations,
videos and dvds, other audiovisual works, celebrities and the entertainment industry; providing a website that displays movie rankings; providing a website featuring a
ranking system measuring popularity of celebrities and identifying trends in public perception and awareness of movie personalities; providing a website featuring entertainment trivia; providing a
web site featuring movie, motion picture and television casting and production information. Entertainment services, namely, providing a website featuring a ranking system measuring popularity of
celebrities and identifying trends in public perception and awareness of movie personalities.”
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.
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 Requirements – Advisory
(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.
(4) Submit a specimen for each international class. The current specimen is acceptable for Class 41 only. Therefore, if applicant adds Class 35 as suggested above, then applicant will need a specimen for that class.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.”
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Examiner’s Amendment
Please note that some or all of the issues/requirements set forth in this Office Action can be resolved via an Examiner’s Amendment if applicant and/or applicant’s attorney contacts the undersigned examining attorney via email at meghan.reinhart@uspto.gov or by phone at 571-272-2943.
Responding to this Office Action
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
Telephone/Email Suggested for Questions
/Meghan Reinhart/
Examining Attorney
Law Office 108
(571) 272-2943
meghan.reinhart@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.