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: 3/13/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF 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).

 

However, applicant must respond to the following requirement.

 

IDENTIFICATIONS OF SERVICES REQUIRE AMENDMENT

 

Applicant is advised to delete or modify the duplicate entries in the International Class 38 identification of services for “television broadcasting,” “television broadcasting of religious, faith-based and motivational programming,” and “streaming of religious, faith-based and motivational audio material on the internet.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

In International Class 41, the wording “production of closed caption television programs production of closed caption television programs featuring faith-based, motivational and religious topics” is indefinite because it appears that applicant is describing two different services, but applicant has not separated these services with the proper punctuation. Proper punctuation in identifications is necessary to delineate explicitly each service within a list and to avoid ambiguity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). 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.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id. 

 

Moreover, the wording “entertainment services, namely, providing a web site featuring non-downloadable musical performances in the form of videos, non-downloadable musical videos, non-downloadable related film clips, Nondownloadable photographs, and other multimedia materials, namely, non-downloadable music videos, all in the field of religion” contains duplicates of “non-downloadable music videos” that must be deleted or modified. See generally TMEP §§1402.01, 1402.01(a). 

 

The wording “providing information on the subject of news and comedy” in the International Class 41 identification of services is too broad. See TMEP §§1402.01, 1402.03. Classification of information services is based on the subject matter of the information provided. TMEP §1402.11(b). News is a type of information, as so applicant is indicating that it is providing information concerning information. Therefore, this current identification is broad enough to include, for example, providing information on the subject of religious news, which would be classified in International Class 45. Applicant must therefore clarify the type of “news” in this description and classify the information services related thereto accordingly.

 

Similarly, the wording “providing information on the subject of inspirational and religious broadcasting, current event news, comedy, variety entertainment, music and youth, adult and children specific topics, namely, information to adult family members on appropriate entertainment and leisure activities for younger family members, and news and information specifically in the field of music, motion pictures, television shows and multimedia content” is too broad. See TMEP §§1402.01, 1402.03. “Providing information on the subject of inspirational and religious broadcasting” refers to information about broadcasting and thus would be classified in International Class 38 (applicant must also indicate the type of broadcasting). Moreover, applicant already lists “providing information on the subject of news and comedy,” making “providing information on the subject of … current event news, comedy” redundant.

 

The following are suggested formats for the amended identifications of services:

 

Class 9: [NO CHANGE REQUIRED]

 

Class 38: Television broadcasting; radio broadcasting; cable television broadcasting; television broadcasting services; digital television broadcasting; television broadcasting of religious, faith-based and motivational programming; cable television broadcasting of religious, faith-based and motivational programming; television broadcasting services of religious, faith-based and motivational programming; broadcasting programs via a global computer network; streaming of data; radio broadcasting of information and other programs; radio program broadcasting; digital television broadcasting of religious, faith-based and motivational programming; audio broadcasting; audio broadcasting of religious, faith-based and motivational programming; broadcasting religious, faith-based and motivational programs via a global computer network; video broadcasting; video broadcasting of religious, faith-based and motivational programming; streaming of audio material on the internet; streaming of video material on the internet; streaming of audio and video material on the Internet; streaming of audio and video material on the Internet featuring content of general interest; streaming of religious, faith-based and motivational video material on the internet; radio broadcasting of religious, faith-based and motivational information and other religious, faith-based and motivational programs; radio program broadcasting of religious, faith-based and motivational programming; and streaming of religious, faith-based and motivational audio material on the internet; providing information in the field of inspirational audio and video broadcasting; providing information on the subject of inspirational and religious {indicate type, e.g., television, radio, internet} broadcasting

 

Class 41: Entertainment, namely, television news shows; production of cable television programs featuring religion; production of closed caption television programs; production of closed caption television programs featuring faith-based, motivational and religious topics; production of radio and television programs; television program production; television program syndication; television show production; production of radio and television programs featuring faith-based, motivational and religious topics; television program production featuring faith-based, motivational and religious topics; religious, faith-based and motivational television program syndication; television show production featuring faith-based, motivational and religious topics; entertainment in the nature of on-going television programs in the field of news, comedy, variety, religion, health, music and youth, adult and children specific topics; entertainment services in the nature of on-going television programs in the field of children's entertainment; entertainment in the nature of on-going television programs in the field of news, comedy, variety, religion, health, and children's faith-based, motivational and religious entertainment programming and religious, faith-based and motivational education; entertainment services, namely, providing a radio program in the field of news, religion, health, variety, comedy and children's religious, faith-based and motivational entertainment programming and religious, faith-based and motivational education via a global computer network; entertainment services, namely, providing ongoing television program in the field of news, religion, health, variety, comedy and children's religious, faith-based and motivational entertainment programming and religious, faith-based and motivational education via a global computer network; entertainment services in the nature of ongoing television programs in the field of children's religious, faith-based and motivational entertainment; radio entertainment services, namely, radio programs featuring performances by a radio personality; radio entertainment production; radio entertainment services, namely, religious, faith-based and motivational radio programs featuring performances by a radio personality; entertainment, namely, production of television shows featuring faith-based, motivational and religious topics and game shows; entertainment services, namely, production and distribution of a game show; film and video production; production of film and videos featuring faith-based, motivational and religious topics; production of radio entertainment featuring faith-based, motivational and religious topics; videotape production; production of videotapes featuring faith-based, motivational and religious topics; entertainment services, namely, providing a web site featuring non-downloadable musical performances in the form of videos, non-downloadable musical videos, non-downloadable related film clips, and non-downloadable photographs, and other multimedia materials, namely, non-downloadable music videos, all in the field of religion; entertainment services, namely, production of online musical videos; entertainment, namely, a continuing news, comedy, variety, health, music and religious show broadcast over television, satellite, audio, and video media; entertainment, namely, continuing television shows broadcast over television, satellite, audio, and video media shows featuring religious content; production of motion picture films featuring faith-based, motivational and religious topics; providing information on the subject of current event news and comedy; providing information in the field of children's religious, faith-based and motivational education and religious, faith-based and motivational entertainment programming; providing entertainment information on the subject of youth and adult topics; providing entertainment information in the field of health; providing information on the subject of inspirational and religious broadcasting, current event news, comedy, variety entertainment, music and youth, adult and children specific topics, namely, information to adult family members on appropriate entertainment and leisure activities for younger family members, and news and information specifically in the field of music, motion pictures, television shows and multimedia content; providing entertainment information in the field of health, namely, information relating to health-themed entertainment

 

Class 45: Providing information on the subject of religious news

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services that are classified in at least four classes; however, applicant submitted fees sufficient for only three classes. Therefore, in response to the requirement that applicant amend the identifications of services, applicant must either (1) restrict the number of classes after amendment to three (i.e., the number of classes covered by the fees already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(a)  List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).

 

(b)  Submit a filing fee for each international class not covered by the fees already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must explicitly address the requirement in this Office action by setting forth the changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response using the “Response to Examining Attorney Office Action” form. 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. All informal communications relevant to this application will be placed in the official application record.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. 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), 2.23(c); TMEP §820.04. However, in certain situations, 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.

 

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 3/13/2019 FOR U.S. APPLICATION SERIAL NO. 88222606

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/13/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.