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: 7/21/2015
INTRODUCTION:
The Office is in receipt of applicant’s incoming communication dated June 29, 2015.
The Class 35 amended ID is acceptable and made of record.
The 2(d) refusal based on Reg. Nos. 3207563 & 4576613 is withdrawn.
REFUSAL – APPLICANT IS NOT THE OWNER OF THE FOREIGN
REGISTRATION:
Registration is refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign registration as of
the filing date of the amendment adding a Section 44(e) basis to the U.S. application. See 15 U.S.C. §1126(e); SARL Corexco v. Webid
Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014); TMEP §1005.
An applicant must be the owner of a foreign registration as of the filing date of the amendment adding Section 44(e) as a basis
to an application. SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014); TMEP §1005.
Applicant submitted a foreign registration on June 29, 2015, effectively adding Section 44(e) as a basis for registration
to the U.S. application. However, in this case, the foreign registration specifies an owner other than the U.S. applicant.
Specifically, the U.S. application sets forth the owner as Dice FM Ltd, while the foreign registration sets forth the
owner as Dice Enterprises Limited.
If applicant can prove the foreign registration was assigned to applicant as of the date of the amendment adding Section 44(e) to
the U.S. application, the Section 44(e) basis can remain in the application. See TMEP §1005. Applicant may
establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the
foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant as of the
amendment adding a Section 44(e) basis to the application. See TMEP §§1005, 1006.
If applicant did not own the foreign registration on or before the date of the amendment adding Section 44(e) to the U.S.
application, applicant may amend the basis for registration from Section 44(e) to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.
See 15 U.S.C. §1051(a)-(b); TMEP §§806.03, 1005. A foreign registration certificate is not required for a Section 1(a) or 1(b) basis. See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).
INFORMATION REQUIRED TO ESTABLISH OWNERSHIP OF FOREIGN APPLICATION:
Applicant’s submission of a foreign registration that specifies an owner different from that of the U.S. applicant raises a
question regarding the applicant’s ownership of the underlying foreign application. See TMEP §1005. In an
application filed under Section 44(d), the applicant must be the owner of the foreign application on the filing date of the U.S. application. TMEP §1005; see
In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB
1991). Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing
date. TMEP §1005; see 37 C.F.R. §2.61(b).
Applicant may establish ownership of the foreign application by submitting (1) a copy of an assignment document, (2)
certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s
office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application. See TMEP §§1005, 1006.
If applicant cannot establish ownership of the foreign application, applicant will not be entitled to the Section 44(d) priority
filing date and the priority claim will be deleted. TMEP §1005.
PARTICULAR GOODS/SERVICES EXCEED SCOPE OF FOREIGN REGISTRATION:
Particular wording in the identification in the U.S. application is not
acceptable because it exceeds the scope of the goods and/or services in the foreign registration. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07. Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and the
remaining wording in the identification is operative for purposes of future amendment. See TMEP §1402.01(b); cf. TMEP
§1402.07(d).
An acceptable identification of goods and/or services is required in a U.S. application.
See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01. For a U.S. application based on Trademark Act Section 44, an applicant is required to
list goods and/or services that do not exceed the scope of the goods and/or services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §§1012,
1402.01(b). Additionally, an applicant may only amend an identification in a U.S. application 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.
The U.S. application identifies the particular goods and/or services as follows:
- Class 9: Computers; Electronic databases in the field of the sale and exchange of tickets recorded on computer media; Computer servers; Computer
screen saver software; Digital media, namely, downloadable audio and video recordings in the field of the sale and exchange of tickets; downloadable electronic publications, namely, books, magazines,
and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular
culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable musical sound recordings; Downloadable images in the field of
entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and
entertainment, cultural and educational events in the nature of music and film festivals; Downloadable MP3 files and MP3 recordings in the field of entertainment music performances, sports, music,
theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature
of music and film festivals; Downloadable podcasts in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions,
public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; audio books in the field of the sale and exchange
of tickets; Carrying cases, covers and sleeves for laptops and tablet computers, electronic books, CD and DVD players and MP3 players; Printers; Electronic and electrical apparatus, namely, ticket
issuing, reading and recording machines
- Class 35: Auctioneering; Administrative processing of purchase orders; Promotion of musical performers, sporting events, musical concerts and
entertainment events of others; Providing an on-line searchable database in the field of purchasing tickets to entertainment events for others; none of the aforesaid in the fields of or related to
employment, recruitment, job placement or resumé and career services
- Class 41: Musical event and entertainment event booking agencies; Ticket agency services for entertainment events;
Booking of seats for shows and sports events; Ticket reservation and booking services for entertainment, sporting and cultural events; On-line admission ticket agency services for entertainment,
educational, sporting and cultural events; Providing an Internet website portal featuring links to musical artist websites and music performance ticket information; Providing on-line publications in
the nature of magazines, books and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public
music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Publishing of electronic publications; Non-downloadable
electronic publications, namely, books, magazines, and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art
exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals
However, the foreign registration -
- Features limiting language in Class 9. The limiting language is “all the aforesaid relating to the booking,
reservation, sale, printing and issuance of tickets, passes, wristbands, entry cards for entertainment events, sporting events, musical events, theatre, art events, television shows, motion pictures,
art exhibitions, public shows, lectures and other entertainment, cultural and educational events.”
- Features limiting language in Class 35. The limiting language is “all the aforesaid relating to the booking,
reservation, sale, printing and issuance of tickets, passes, wristbands, entry cards for entertainment events, sporting events, musical events, theatre, art events, television shows, motion pictures,
art exhibitions, public shows, lectures and other entertainment, cultural and educational events”. This limiting language is not present in the U.S. ID.
- Features limiting language in Class 41. The limiting language is “all the aforesaid relating to the booking,
reservation, sale, printing and issuance of tickets, passes, wristbands, entry cards for entertainment events, sporting events, musical events, theatre, art events, television shows, motion pictures,
art exhibitions, public shows, lectures and other entertainment, cultural and educational events”
Applicant may amend to:
- Class 9: Computers; Electronic databases in the field of the sale and exchange of tickets recorded on computer media; Computer servers; Computer
screen saver software; Digital media, namely, downloadable audio and video recordings in the field of the sale and exchange of tickets; downloadable electronic publications, namely, books, magazines,
and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular
culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable musical sound recordings; Downloadable images in the field of
entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and
entertainment, cultural and educational events in the nature of music and film festivals; Downloadable MP3 files and MP3 recordings in the field of entertainment music performances, sports, music,
theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature
of music and film festivals; Downloadable podcasts in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions,
public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; audio books in the field of the sale and exchange
of tickets; Carrying cases, covers and sleeves for laptops and tablet computers, electronic books, CD and DVD players and MP3 players; Printers; Electronic and electrical apparatus, namely, ticket
issuing, reading and recording machines; all the aforesaid relating to the booking, reservation, sale, printing and issuance of tickets, passes, wristbands, entry
cards for entertainment events, sporting events, musical events, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and
educational events
- Class 35: Auctioneering; Administrative processing of purchase orders; Promotion of musical performers, sporting
events, musical concerts and entertainment events of others; Providing an on-line searchable database in the field of purchasing tickets to entertainment events for others; none of the aforesaid in
the fields of or related to employment, recruitment, job placement or resumé and career services; all the aforesaid relating to the booking,
reservation, sale, printing and issuance of tickets, passes, wristbands, entry cards for entertainment events, sporting events, musical events, theatre, art events, television shows, motion pictures,
art exhibitions, public shows, lectures and other entertainment, cultural and educational events
- Class 41: Musical event and entertainment event booking agencies; Ticket agency services for entertainment events;
Booking of seats for shows and sports events; Ticket reservation and booking services for entertainment, sporting and cultural events; On-line admission ticket agency services for entertainment,
educational, sporting and cultural events; Providing an Internet website portal featuring links to musical artist websites and music performance ticket information; Providing on-line publications in
the nature of magazines, books and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public
music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Publishing of electronic publications; Non-downloadable
electronic publications, namely, books, magazines, and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art
exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; all
the aforesaid relating to the booking, reservation, sale, printing and issuance of tickets, passes, wristbands, entry cards for entertainment events, sporting events, musical events, theatre, art
events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events
Therefore, applicant may respond by either:
(1) deleting the goods and/or services in the U.S. application that are beyond the scope of the
foreign registration; or
(2) substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S.
application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may
not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6),
2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services should remain in the U.S.
application.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at
the number below.
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@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.