Reconsideration Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

Issue date:  September 09, 2019

 

Applicant’s Request for Reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The Trademark Examining Attorney has carefully reviewed Applicant’s Request and determined that the Request did not:  (1) raise a new issue, (2) resolve the outstanding issues, (3) provide any new or compelling evidence with regard to the outstanding issues, or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issues.  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

The following requirement made final in that Office action is satisfied: 

 

            •  Clarification of Number of Classes Required – Multiple Class Application Requirements

 

See TMEP §§715.03(a)(ii)(B), 715.04(a).

 

Accordingly, the following requirement made final in the Office action dated April 5, 2019 is maintained and continued: 

 

            •  Amended Identification of Services Required

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

The wording “retail services and wholesale store services featuring optical discs” (emphasis added) in the identification of services in Class 35 is indefinite and must be clarified because it is unclear what the services are. Applicant must specify the retail activity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording in Class 35, if accurate:  “retail and wholesale store services featuring optical discs”.

 

Further, the wording “entertainment services, namely, an ongoing multimedia program featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns distributed via various platforms across multiple forms of transmission media” (emphasis added) in the identification of services in Class 41 is indefinite and must be clarified because it does not specify the subject matter of the television programs.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording in Class 41, if accurate: “entertainment services, namely, an ongoing multimedia program and television programs featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, thrillers, war, and westerns distributed via various platforms across multiple forms of transmission media”.

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

ID Manual Online

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Partial Abandonment Advisory. Failure to timely resolve the outstanding issues will result in partial abandonment of the application.  The following services will be held abandoned and deleted from the application:

 

Class 35 – Retail services and wholesale store services featuring optical discs

 

Class 41 – Entertainment services, namely, an ongoing multimedia program featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns distributed via various platforms across multiple forms of transmission media

 

See 37 C.F.R. §2.65(a); TMEP §§715.03(a)(ii)(C), 718.02(a).

 

The application will then proceed with the following services only: 

 

Class 35 – Distribution for others in the field of blank optical discs and pre-recorded optical discs featuring sound, video and data, namely, fulfilling and processing orders received from customers; order fulfillment services including receiving and putaway processing; inventory management in the nature of operating a distribution center or warehousing facility containing distribution inventory; inventory management, shipping and transportation management, namely, shipment processing and preparing shipping documents and invoices for business purposes; arranging the transportation of goods for others; providing transportation documents for others; transportation logistics management in the field of blank optical discs, and pre-recorded optical discs featuring sound, video and data; providing customer service management for others; invoicing; return management in the nature of management and processing of returned blank optical discs and pre-recorded optical discs featuring sound, video and data; business consultancy services via the internet

 

Class 38 – Streaming of audio and video material, namely, audiovisual works, motion pictures, trailers, television programming, music, and games via the internet

 

Class 39 – Transport, delivery, packaging, and storage of optical discs; packaging services, namely, packaging of optical discs and repackaging of optical discs to the order and specification of others

 

Class 41 – Audio mastering; film mastering services; record mastering; video mastering services; video and audio mastering of optical discs; production of master optical discs recorded with music and video; providing non-downloadable entertainment content in the nature of audiovisual works, namely, motion pictures, movie trailers, television programs featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentaries, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, thrillers, war, and westerns, by means of an interactive global computer and communications networks; entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; providing on-line videos, not downloadable, featuring audio-visual works, namely, movies, television programming featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentaries, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, thrillers, war, and westerns; providing on-line videos featuring motion pictures, movies and television programs in the fields of action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, thrillers, war, and westerns, not downloadable; providing films and television programs featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, thrillers, war, and westerns, not downloadable, via video-on-demand transmission services; providing on-line music, not downloadable; entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media; digital video, audio, and multimedia publishing services; multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; providing non-downloadable electronic publications, namely, electronic magazine, newsletter and brochures in the field of entertainment; providing on-line computer games

 

If Applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If Applicant has not filed an appeal and time remains in the six-month response period, Applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement, and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a Request for Reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

Samantha Sherman

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 09, 2019 for

U.S. Trademark Application Serial No. 88053809

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Samantha Sherman

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”