To: | A&E Television Networks, LLC (trademarks.us@dentons.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86458351 - OUTBACK - 21602608.Out |
Sent: | 3/6/2015 6:47:29 PM |
Sent As: | ECOM119@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86458351
MARK: OUTBACK
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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: A&E Television Networks, LLC
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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: 3/6/2015
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.
Search of Office Records: No Conflicting Marks
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).
Applicant should note the following ground for refusal.
Section 2(e)(1) Refusal: Merely Descriptive
Applicant’s mark is OUTBACK for the following goods and services:
Class 9: Multimedia goods, namely, prerecorded digital video discs and DVDs featuring subjects of general human interest; digital media, namely, downloadable audio and video files featuring subjects of general human interest; downloadable webcasts and podcasts featuring subjects of general human interest; downloadable graphics for wireless devices; downloadable on-line discussion board posts featuring subjects of general human interest; computer game software and video game software; downloadable computer and video game software via a global computer network, mobile platforms, and wireless devices for entertainment purposes; downloadable mobile applications for games
Class 41: Entertainment services, namely, a multimedia program series featuring subjects of general human interest distributed via various platforms across multiple forms of transmission media; entertainment services, namely, an ongoing television series featuring subjects of general human interest; providing a website featuring entertainment information; entertainment services, namely, operating a real-time non-downloadable game for others via the Internet, mobile network platforms, and local area computer networks; electronic game services, namely, providing online electronic games by means of the Internet, mobile network platforms, and local area computer networks; entertainment services, namely, providing temporary use of non-downloadable interactive games
The attached entry from the American Heritage Dictionary shows that OUTBACK means “Out to or in remote rural country, especially in Australia or New Zealand” or “The remote rural part of a country, especially of Australia or New Zealand.” OUTBACK therefore merely describes a characteristic, feature and subject matter of applicant’s goods and services, which include items and activities about life in remote or rural areas. Moreover, the attached registration from applicant’s mark OUTBACK HUNTERS for partially-identical goods shows this mark registered on the Supplemental Register due to its descriptiveness, and the attached page from applicant’s website shows a video entitled THE OUTBACK with the description “The hunters describe life in the Outback.”
For these reasons, the mark is merely descriptive of applicant’s goods and/or services, and registration must be refused.
Advisory: Supplemental Register
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.
The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):
(1) The following statement: “Applicant is believed to be the owner of the mark and that the mark is in use in commerce.”
(2) The date of first use of the mark anywhere on or in connection with the goods and/or services.
(3) The date of first use of the mark in commerce as a trademark or service mark.
(4) A specimen showing actual use of the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.
(5) A filing fee of $100 per class for each international class of goods and/or services for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
(6) Verification of the above (1) through (3) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.
See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b), 2.193(e)(1); TMEP §§1104.08, 1104.10(b)(v).
Amendments to allege use can be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp. Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action. TMEP §1104.
Information About Goods Required
To permit proper examination of the application, applicant must submit additional product information about the goods. See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested product information should include fact sheets, instruction manuals, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.
The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Specifically, applicant must specify whether its goods will be about remote rural areas such as the Australian outback or similar environments.
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814. Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Information About Services Required
To permit proper examination of the application, applicant must submit additional information about the services. See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §814. The requested information should include fact sheets, brochures, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ. If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.
The submitted factual information must make clear what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
Specifically, applicant must specify whether its services will be in the field of remote rural areas such as the Australian outback or similar environments.
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. Merely stating that information about the services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, 70 USPQ2d at 1457-58.
Response
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Robin Mittler/
Robin Mittler
Trademark Examining Attorney
Law Office 119
Robin.Mittler@uspto.gov
p: (571) 270-1534
f: (571) 270-2534
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.