To: | Twentieth Century Fox Film Corporation (tm@fox.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87792254 - FOX+ - 81351779 |
Sent: | 5/16/2018 8:18:24 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87792254
MARK: FOX+
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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: Twentieth Century Fox Film Corporation
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/16/2018
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, 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE RECORDS
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 TO WHICH APPLICANT MUST RESPOND:
· Requirement for Acceptable Identification of Services
REQUIREMENT FOR ACCEPTABLE IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Specifically, the following wording is unacceptable:
Education and entertainment services – This wording must be amended to identify the specific type of education and entertainment services. More specifically, with regard to the education services, applicant must indicate the mode of instruction, e.g., classes, workshops, conferences, seminars, etc., as well as the field or subject matter of the services, e.g., chemistry, math, history, etc. With regard to entertainment services, the type of entertainment must be identified, e.g., live performances by a musical band, ongoing television programs in the field of news, online computer games, online video games, etc.
providing of training – This wording must be amended to indicate the type or area of the training, e.g., in the use of computers, for software installation, in the field of physical fitness, etc.
sporting and cultural activities – This wording fails to identify specific services; the wording must be amended to clearly and specifically identify the services that are provided, e.g., “organizing community sporting and cultural events.”
production, distribution, and presentation of audio and visual works in the nature of motion picture films and television programming, providing on-line information in the field of motion picture films, television programming, and video entertainment via the Internet, entertainment services in the nature of non-downloadable videos and images featuring motion picture films and television programming transmitted via the Internet and wireless communication networks – First, this wording must be amended to use the correct punctuation in order to clarify the individual services listed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each service within a list and to avoid ambiguity. In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id. Thus, here, applicant must use semi-colons in order to clearly delineate the separate services. Additionally, with regard to “production, distribution, and presentation of audio and visual works in the nature of motion picture films and television programming,” the wording “television programming” must be amended to clarify the nature of the services, e.g., “television programs” would be acceptable. With regard to “entertainment services in the nature of non-downloadable videos and images featuring motion picture films and television programming transmitted via the Internet and wireless communication networks,” this wording must be amended to clarify what is meant by “television programming” (as above), and indicate the subject matter or area of the motion picture films and television programs.
Applicant may adopt the following identification of services, noting that the wording which should be deleted is in strikethrough, while newly-added wording is in bold, appropriate wording should be provided by applicant where a “blank space” (underline) is
indicated, and underlined wording indicates that the punctuation has been changed:
Education, namely, conducting _________ {indicate mode of instruction, e.g., classes,
conferences, seminars, workshops, etc.} in the field of _________ {indicate subject matter, e.g., math, history, etc.}, and entertainment services,
namely, providing online computer games; providing of training in the field of _________ {indicate area or nature of training, e.g., physical fitness};
organizing community sporting and cultural events activities; production, distribution, and presentation of audio and visual works in
the nature of motion picture films and television programming programs; providing on-line information in the field of motion picture films,
television programming, and video entertainment via the Internet; entertainment services in the nature of non-downloadable videos and images featuring motion picture
films and television programming programs about _________ {indicate subject matter or field, e.g., action, adventure, drama, comedy, science,
history, etc.} transmitted via the Internet and wireless communication networks
In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name. See TMEP §1402.03(a).
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. See TMEP §1402.04.
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
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 and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
/Susan K. Lawrence/
Susan Kastriner Lawrence
Trademark Examining Attorney
Law Office 116, 571-272-9186
sue.lawrence@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.