To: | Modular Recordings Pty Ltd (brent.labarge@umusic.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88055906 - MODULAR - N/A |
Sent: | 11/15/2018 9:47:19 AM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88055906
MARK: MODULAR
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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: Modular Recordings Pty Ltd
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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: 11/15/2018
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
The assigned trademark examining attorney has reviewed the referenced application. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
OFFICE SEARCH
The trademark examining attorney’s search of the Office’s database of registered and pending marks has revealed no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
I. REFUSAL – SECTION 44(e) FOREIGN REGISTRATION CERTIFICATE
An acceptable “copy” is a document that has been issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.
Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
II. IDENTIFICATION OF SERVICES
In this case, the U.S. application identifies the particular services as follows: “Distributorship services in the field of musical sound recordings and video recordings; advertising and promotion services and related consulting services; advertising and publicity services; association services, namely, promoting the interests of musicians, singers, songwriters, musical performers and artists; computerized online ordering featuring general consumer merchandise and general consumer goods; computerized online ordering services in the field of music; computerized online retail store services in the field of music; computerized online gift ordering services which match the gift giver's requirements with the gift recipients wants and needs; conducting an online tradeshow exhibition, in the field of music, musical concerts and videos; mail order catalog services featuring CDs, cassettes, DVDs, clothing, and general merchandise; online retail store services featuring downloadable pre-recorded music and audio-visual content, clothing, and general merchandise; organization of promotions using audio- visual media; preparing audio-visual displays for music advertising; preparing audio visual presentations for use in advertising; arranging and conducting trade show exhibitions in the field of music and entertainment; arranging and conducting fairs and exhibitions for business and advertising purposes; promoting and conducting trade shows in the field of music; promoting the concerts of others; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with concerts and musical events; promoting the goods of others by preparing and placing advertisements in an electronic magazine accessed through a global computer network; providing consumer product information about the goods and services of others via a global computer network; retail store services available through computer communications and interactive television featuring CDs, cassettes, DVDs, videocassettes and licensed merchandise; subscriptions to books, reviews, newspapers or comic books.”
However, the foreign registration identifies the following Class 35 services: “Business management services for the music, sport and entertainment industries.”
These services in the U.S. application exceed the scope of services in the foreign registration because they are not identified in the foreign registration.
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of services in the U.S. application to correspond to the goods in the foreign registration, ensuring that all services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Section 44 basis for the services beyond the scope of the foreign registration and relying solely on the Section 1 basis for these services.
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, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these services are within the scope of the foreign registration and should remain in the U.S. application.
Class 35: (Based on Section 44(e)) (Based on intent to use) Business management services for the music, sport and entertainment industries; (Based on intent to use) Distributorship services in the field of musical sound recordings and video recordings; advertising and promotion services and related consulting services; advertising and publicity services; association services, namely, promoting the interests of musicians, singers, songwriters, musical performers and artists; computerized online ordering featuring general consumer merchandise and general consumer goods; computerized online ordering services in the field of music; computerized online retail store services in the field of music; computerized online gift ordering services which match the gift giver's requirements with the gift recipients wants and needs; conducting an online tradeshow exhibition, in the field of music, musical concerts and videos; mail order catalog services featuring CDs, cassettes, DVDs, clothing, and general merchandise; online retail store services featuring downloadable pre-recorded music and audio-visual content, clothing, and general merchandise; organization of promotions using audio-visual media; preparing audio-visual displays for music advertising; preparing audio visual presentations for use in advertising; arranging and conducting trade show exhibitions in the field of music and entertainment; arranging and conducting fairs and exhibitions for business and advertising purposes; promoting and conducting trade shows in the field of music; promoting the concerts of others; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with concerts and musical events; promoting the goods of others by preparing and placing advertisements in an electronic magazine accessed through a global computer network; providing consumer product information about the goods and services of others via a global computer network; retail store services available through computer communications and interactive television featuring CDs, cassettes, DVDs, videocassettes and licensed merchandise; subscriptions to books, reviews, newspapers or comic books
(Suggested additions are underscored.)
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.
III. APPLICANT ENTITY TYPE
Applicant may indicate that it is a “proprietary limited company”, if accurate.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the issues in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Betty Chang/
Examining Attorney
Law Office 115
571-272-6517
betty.chang@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.