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.  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: 2/4/2019

 

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 referenced application has been reviewed by the assigned trademark examining attorney.  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.

SUMMARY OF ISSUES:

 

• Registration of the mark is partially refused under Trademark Act Section 2(d)
• The identification of goods and services requires amendment

 

THE FOLLOWING REFUSAL APPLIES ONLY TO INTERNATIONAL CLASS 41

 

Section 2(d) Refusal—Likelihood of Confusion

Registration of the applied-for mark is refused in Class 41 because of a likelihood of confusion with the marks in U.S. Registration Nos. 0344799, 0976848, and 1975999.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

The applicant has applied to register the mark COLUMBIA.  The registered marks are COLUMBIA with design (Reg. Nos. 0344799 and 1975999) and COLUMBIA PICTURES (Reg. No. 0976848).

 

The applicant’s mark is similar to the registered marks because the dominant source-identifying feature in each of the marks is the identical term COLUMBIA. COLUMBIA is the sole literal element in two of the registrations, and comprises the applicant’s mark in its entirety.  While the mark in Reg. No. 0976848 includes the additional wording “PICTURES”, this term is descriptive as applied to the registrant’s “motion pictures” goods, and has thus been disclaimed.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). In the present case, the dominant feature in all of the marks is the identical term COLUMBIA.

 

The additional design element in Reg. Nos. 0344799 and 1975999 does not change the finding of similarity.  The design is comprised of a woman on a pedestal holding a torch, with light rays emanating from the torch and clouds in the background.  While this design is not immaterial, it does not significantly alter the overall impression of the mark.  Moreover, in a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

 

For the reasons discussed above, the applicant’s mark is confusingly similar to the registered marks.

 

Relatedness of the Goods/Services

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The registered marks are used on “motion pictures” (Reg. Nos. 0976848 and 0344799) and “motion picture film, prerecorded video discs and laser discs featuring full length motion pictures for general release, and motion picture films featuring full length movies for general release downloadable from the Internet” (Reg. No. 1975999). 

 

The applicant’s services are “entertainment services, namely, providing a web site featuring virtual reality content; distribution of virtual reality media content; film studios; motion picture film development, production and distribution; film and video editing; motion picture sound track production; special effects animation services for film and videos; production and distribution of virtual reality media; production and distribution of television and cable television programs; television and cable television programs featuring virtual reality content, comedy, drama, action and adventure, suspense, mystery, horror, romance, science fiction, animation and documentaries; television and cable television program syndication; entertainment, namely, providing a web site featuring non-downloadable motion pictures, related film clips, television programs and other multimedia materials featuring virtual reality content, comedy, drama, action and adventure, suspense, mystery, horror, romance, science fiction, animation and documentaries; film and television production and distribution; entertainment media production services for motion pictures, television and internet; providing a web site featuring non-downloadable software, webisodes, films, movies and television programs in the field of virtual reality content, comedy, drama, action and adventure, suspense, mystery, horror, romance, science fiction, animation and documentaries; provision of non-downloadable films, movies and television programs via a video-on-demand service.”

 

First, the applicant’s services of “providing a web site featuring webisodes, films, movies and television programs in the field of virtual reality content, comedy, drama, action and adventure, suspense, mystery, horror, romance, science fiction, animation and documentaries; provision of non-downloadable films, movies and television programs via a video-on-demand service” are closely related to the registrant’s “motion picture films featuring full length movies for general release downloadable from the Internet,” as these goods and services are virtually the same in their general nature.  The applicant provides non-downloadable films and movies, and the registrant provides downloadable movies.  While the applicant has specified the subject matter of some of its films and movies, this subject matter includes essentially all general movie topics, and thus this specification does not really restrict the identification.  Moreover, the registrant’s identification uses the broad wording “films featuring full length movies,” which is presumed to encompass movies of all types. 

 

The applicant’s other services are also related to the registrant’s motion picture and film goods because the applicant’s services include activities undertaken in the course of providing “motion pictures” and services that are commonly provided in conjunction with motion pictures or under the same mark as motion pictures. “Motion pictures” are movies.  (See the attached definition).  Several of the applicant’s services entail activities involved in making movies.  For example, a film studio is a place where motion pictures are made, or a company that produces motion pictures. (See the attached “studio” definition). Similarly, motion picture film development, production and distribution, special effects animation services, film and video editing, and motion picture sound track production are all activities necessary to or undertaken in the course of making of motion pictures. Thus, these services of the applicant are related to the goods of the registrant, as entities that provide motion pictures generally also provide film studio services, special effects animation, film editing and production, and film sound track production.

 

The applicant’s services also include those that are ancillary or complementary to the provision of motion pictures, and are thus also often provided by entities that provide motion pictures. The applicant’s services include a variety of activities related to television and cable programs, such as production and distribution of television and cable television programs, television and cable television programs featuring a range of subject matters or genres, television and cable television program syndication, television production and distribution, entertainment media production services for motion pictures, television and internet, and provision of non-downloadable films, movies and television programs via a video-on-demand service.  In the current entertainment landscape, it is not uncommon for a single entity to provide both motion pictures and cable or television entertainment. The examining attorney references the attached Internet evidence, consisting of web pages of third party movie and film production companies, which shows that it is not uncommon for a single entity to provide services featuring both motion pictures and television programs.  The attached evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark, that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods and services are similar or complementary in terms of purpose or function. The attached evidence further shows that such entities also commonly provide television and movies via a website or on-demand services. Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

The applicant’s mark is similar to the registered marks, and the goods and services of the parties are related. Accordingly, there would be a likelihood of confusion as to the source of the goods and services.  Registration of the mark in Class 41 is therefore refused under Trademark Act Section 2(d) based on a likelihood of confusion with the marks in U.S. Registration Nos. 0344799, 0976848, and 1975999.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. 

 

Partial Refusal—Response Options

The stated refusal refers to the services in Class 41 only and does not bar registration in the other classes. Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)       Deleting the class to which the refusal pertains; or

 

(2)       Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

Informality to be Addressed

If applicant responds to the refusal, applicant must also respond to the following requirement:

 

Identification of Goods and Services—Classes 9, 41, and 42

The identification of services in Classes 35 and 38 is acceptable.  However, the identification in the other classes is unacceptable because it includes broad or indefinite language and lists services that are misclassified.  TMEP §§1402.01, 1403.

 

Class 9

The wording “video recordings featuring virtual reality, augmented reality, and mixed reality content” is unacceptable as indefinite.  An identification for video recordings must specify the subject matter of the recordings.  Here, noting that the “content” is provided in virtual, augmented, and mixed reality is not sufficiently definite, as it merely indicates the nature of the content, and does not indicate any particular subject matter or genre.

 

Class 41

“Entertainment services, namely, providing a web site featuring virtual reality content” is unacceptable as indefinite.  The services of providing a web site are classified according to the subject matter of the website.  Here, while the applicant has broadly identified the services as “entertainment services,” the subject matter of the website is indicated only as “virtual reality content.” This is not acceptable, as “virtual reality” only indicates a general type of content, which content could include any specific subject matter. Thus, the applicant must further specify the subject matter or nature of the content.

 

“Distribution of virtual reality media content” and “production and distribution of virtual reality media” are unacceptable as indefinite. Generally, “distribution” refers to delivery-type transportation services in International Class 39.  SeeTMEP §§1401.02(a), 1402.01, 1402.03.  One exception to this is the distribution of motion pictures or television or radio programs, as “distribution” in that context identifies the means of making the programs or films available to the public.  However, in the present case, what is distributed is identified as “media content” and “media,” which could include physical items such as DVDs, computer software, computer games, or the like, or services such as online streaming or broadcasting, which are properly classified in Class 38.  “Distribution” of physical goods is not a service, but rather only an activity ancillary to the provision of the final product software, game, DVD, etc.  Thus, the applicant must amend this portion of the identification to either specify media/content for which distribution is an acceptable service, or to delete the distribution services from the identification.  In addition, “virtual reality media” and “virtual reality media content” are indefinite as a subject matter or a type of production or distribution service, and must be further specified.

 

“Television and cable television programs featuring…” is unacceptable, as the nature of these services is not clear and this wording could refer to activities that are not registrable services.  If the services are in the nature of production services, this must be specified.  If the identification is intended to refer to the provision of the programs, it must be specified that the programs are ongoing or a series.  A single television program is generally not regarded as a service.  If accurate, the applicant may also clarify that it makes available the television and cable programs of others.  In addition, “virtual reality content” is indefinite as a subject matter and requires further specification.

 

“Entertainment, namely, providing a website featuring non-downloadable motion pictures, related film clips, television programs and other multimedia materials featuring virtual reality content” is unacceptable because the nature of these services is not clear.  Specifically, “virtual reality content” is indefinite as a subject matter and requires further specification.  Please note that, for non-downloadable “multimedia materials,” the subject matter/content of the materials must be limited to that properly classified in Class 41.

 

“Providing a web site featuring non-downloadable webisodes, films, movies and television programs in the field of virtual reality content” is unacceptable because the subject matter “virtual reality content” is indefinite, and the nature of these services is not clear.

 

“Providing a website featuring non-downloadable software” featuring the listed content is unacceptable because non-downloadable software is properly classified in Class 42.  The only exception is game software, which is acceptable in Class 41.

 

Class 42

“Design and Development of virtual reality software providing a digital and online platform of non-downloadable entertainment software for watching concerts and events” is unacceptable because the nature of these services is not clear.  Specifically, it is not clear if this wording refers to a single service, or whether it includes a typographical error and refers to the services both of designing and developing virtual reality software and providing a platform featuring non-downloadable software.  The applicant must therefore clarify this wording.

 

“Software services which enable the programming of music themed virtual spaces, videos and experiences, namely, computer programs featuring…” is unacceptable because the nature of these services is not clear.  Specifically, it is not clear whether the identified “computer programs” are the sole service, or whether they are the subject of the “programming” services.  Clarification of this wording is thus required.  In addition, if the services are the provision of software, the applicant must clarify that the software is not downloadable.

 

“Transmission of electronic messages among computer users via avatar-based communications for use in virtual reality, augmented reality and mixed reality applications and virtual worlds” is unacceptable in Class 42 because these services are properly classified in Class 38.

 

“Programming photo-realistic avatars and virtual goods, namely, computer programs featuring clothing, accessories, hair styles, avatar features, and games for use in virtual reality, augmented reality and mixed reality applications and virtual worlds” is unacceptable as indefinite.  First, it is not clear whether the services are programming of computer programs, or the computer programs themselves. If the latter, the identification must make clear that the programs are not downloadable.  In addition, online or non-downloadable computer games are properly classified in Class 41.

 

The applicant must amend the application to adopt an acceptable identification and classification of goods and services for those goods and services currently identified in Classes 9, 41, and 42. 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.

 

The applicant may amend to adopt one or more of the following identifications, if accurate:

 

INTERNATIONAL CLASS 9: Software featuring a virtual reality entertainment experience; musical video recordings featuring virtual reality, augmented reality, and mixed reality content; video recordings featuring virtual reality, augmented reality, and mixed reality content in the nature of music videos, musical performances, interviews with performing artists, and other music-themed entertainment content; music themed virtual spaces, videos and experiences, namely, computer programs featuring interactive virtual music listening rooms, virtual concerts, virtual spaces, theme park ride experiences, bedrooms, houses, apartments, restaurants, bars, nightclubs, garages and offices for use in virtual reality, augmented reality and mixed reality applications and virtual worlds; music and music artist branded virtual goods, namely, computer programs featuring virtual content rights, clothing, accessories, avatar features, hair styles, and games for use in virtual reality, augmented reality and mixed reality applications and virtual worlds; computer programs featuring music themed virtual spaces, videos and experiences, namely, interactive virtual music listening rooms, virtual concerts, virtual theme park ride experiences, audio and video material for use in virtual reality, augmented reality and mixed reality applications and virtual worlds.

 

INTERNATIONAL CLASS 38: Streaming of audio and video material on the internet featuring virtual reality, augmented reality, and mixed reality content; streaming services featuring music themed virtual spaces, videos and experiences, namely, interactive virtual music listening rooms, virtual concerts, virtual theme park ride experiences, audio and video material for use in virtual reality, augmented reality and mixed reality applications and virtual worlds; electronic transmission of messages among computer users via avatar-based communications in virtual reality, augmented reality and mixed reality applications and virtual worlds

 

INTERNATIONAL CLASS 41: Entertainment services, namely, providing a web site featuring non-downloadable virtual reality content in the nature of music videos, musical performances, interviews with performing artists, and other music-themed entertainment content; distribution of films and television programs featuring virtual reality content; film studios; motion picture film development, production and distribution; film and video editing; motion picture sound track production; special effects animation services for film and videos; production and distribution of films, television programs, and videos featuring virtual reality content; production and distribution of television and cable television programs; providing ongoing television and cable television programs featuring virtual reality content in the fields of comedy, drama, action and adventure, suspense, mystery, horror, romance, science fiction, animation and documentaries; television and cable television program syndication; entertainment, namely, providing a web site featuring non-downloadable motion pictures, related film clips, television programs and other multimedia materials featuring virtual reality content in the fields of comedy, drama, action and adventure, suspense, mystery, horror, romance, science fiction, animation and documentaries; film and television production and distribution; entertainment media production services for motion pictures, television and internet; providing a web site featuring non-downloadable webisodes, films, movies and television programs featuring virtual reality content in the fields of comedy, drama, action and adventure, suspense, mystery, horror, romance, science fiction, animation and documentaries; provision of non-downloadable films, movies and television programs via a video-on-demand service; providing online virtual reality computer games that include a feature whereby users can program their own photo-realistic avatars.

 

INTERNATIONAL CLASS 42: Design and development of virtual reality software; providing a digital and online platform featuring non-downloadable entertainment software for watching concerts and events; software as a service (SAAS) services featuring software for watching audio and video material featuring virtual reality, augmented reality, and mixed reality content; providing temporary use of non-downloadable software for watching audio and video material featuring virtual reality, augmented reality, and mixed reality content; software as a service services which enable the programming of music themed virtual spaces, videos and experiences, namely, providing non-downloadable computer programs featuring interactive virtual music listening rooms, virtual concerts, virtual spaces, virtual theme park ride experiences, bedrooms, houses, apartments, restaurants, bars, nightclubs, garages and offices all for use in virtual reality, augmented reality, and mixed reality applications and virtual worlds; programming photo-realistic avatars and virtual goods, namely, providing temporary use of online, non-downloadable computer programs featuring clothing, accessories, hair styles, and avatar features, for use in virtual reality, augmented reality and mixed reality applications and virtual worlds.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Partial Abandonment if No Response to Office Action

If applicant does not respond to this Office action within the six-month period for response, the services in Class 41 and the following goods and services in Classes 9 and 42 will be deleted from the application:  

 

INTERNATIONAL CLASS 9: Video recordings featuring virtual reality, augmented reality, and mixed reality content.

 

INTERNATIONAL CLASS 42: Design and Development of virtual reality software providing a digital and online platform of non-downloadable entertainment software for watching concerts and events; software services which enable the programming of music themed virtual spaces, videos and experiences, namely, computer programs featuring interactive virtual music listening rooms, virtual concerts, virtual spaces, virtual theme park ride experiences, bedrooms, houses, apartments, restaurants, bars, nightclubs, garages and offices all for use in virtual reality, augmented reality, and mixed reality applications and virtual worlds; programming photo-realistic avatars and virtual goods, namely, computer programs featuring clothing, accessories, hair styles, avatar features, and games for use in virtual reality, augmented reality and mixed reality applications and virtual worlds

 

The application will then proceed with the services as currently identified in Classes 35 and the following goods and services in the other classes: 

 

INTERNATIONAL CLASS 9: Software featuring a virtual reality entertainment experience; musical video recordings featuring virtual reality, augmented reality, and mixed reality content; music themed virtual spaces, videos and experiences, namely, computer programs featuring interactive virtual music listening rooms, virtual concerts, virtual spaces, theme park ride experiences, bedrooms, houses, apartments, restaurants, bars, nightclubs, garages and offices for use in virtual reality, augmented reality and mixed reality applications and virtual worlds; music and music artist branded virtual goods, namely, computer programs featuring virtual content rights, clothing, accessories, avatar features, hair styles, and games for use in virtual reality, augmented reality and mixed reality applications and virtual worlds; computer programs featuring music themed virtual spaces, videos and experiences, namely, interactive virtual music listening rooms, virtual concerts, virtual theme park ride experiences, audio and video material for use in virtual reality, augmented reality and mixed reality applications and virtual worlds

 

INTERNATIONAL CLASS 38: Streaming of audio and video material on the internet featuring virtual reality, augmented reality, and mixed reality content; streaming services featuring music themed virtual spaces, videos and experiences, namely, interactive virtual music listening rooms, virtual concerts, virtual theme park ride experiences, audio and video material for use in virtual reality, augmented reality and mixed reality applications and virtual worlds; transmission of electronic messages among computer users via avatar-based communications for use in virtual reality, augmented reality and mixed reality applications and virtual worlds.

 

INTERNATIONAL CLASS 42: Software as a service (SAAS) services featuring software for watching audio and video material featuring virtual reality, augmented reality, and mixed reality content; providing temporary use of non-downloadable software for watching audio and video material featuring virtual reality, augmented reality, and mixed reality content.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  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. 

 

 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(p)571-272-9430

(f) 571-273-9430

(e) kimberly.frye@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/4/2019 FOR U.S. APPLICATION SERIAL NO. 88158193

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 2/4/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(p)571-272-9430

(f) 571-273-9430

(e) kimberly.frye@uspto.gov

 

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.