Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  October 18, 2019

 

After further consideration, the examining attorney advises as follows.

 

 

SUMMARY OF ISSUES:

 

• Identification of Services – Class 41 Services Only
• Multiple-Class Application Requirements - Advisory

 

 

IDENTIFICATION OF SERVICES – CLASS 41 SERVICES ONLY

 

The amended identification of services in Class 41 indefinite and requires clarification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “publication of…television entertainment on magnetic or optical media,”  “multimedia publishing of…television entertainment on magnetic or optical media” and “non-downloadable electronic publications…television entertainment” and the like requires clarification because the nature of the services is unclear and may identify goods in Class 9.  For example, “prerecorded magnetic data carriers featuring television entertainment” identifies goods in Class 9.  Applicant must clarify the nature of these goods and/or services classify the goods and/or services in the correct classification.

 

In addition, the wording “entertainment services, namely, provision of multimedia programs in the form of radio and television entertainment, games, films, music, interactive advertising, and video recordings” identifies services in Class 35.  “Advertising services” are in Class 35.  Applicant must clarify the nature of these services and classify the services in the correct classification.  Applicant must also clarify the nature of the “television entertainment” and indicate the manner in which the “music” and “videos” are provided and the subject matter of the video recordings.  Applicant may amend this wording to “provision of multimedia programs in the nature of radio and television entertainment, namely, ongoing television and radio programs, on-line games, production of films, a website featuring non-downloadable prerecorded music  and video recordings featuring [indicate subject matter] via the Internet,” if accurate.

 

Lastly, the wording “providing information” in the field of “multimedia presentations” in some instances is overly broad because it encompasses “providing information in the field of multimedia presentations in the field of business” and “providing information in the field of multimedia business presentations” in Class 35 or “multimedia presentations in the field of finance” in Class 36. 

 

Suggested amendments to the Class 41 services are highlighted in bold.  Applicant may adopt the following identification, if accurate:

 

 

Class 41:         Education services, namely, the provision of podcasts, webcasts, and continuing programs accessible via the internet or other computer or communications networks featuring news and commentary in the fields of movies, television programs, audiovisual works, music, audio works, books, theatrical works, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio programs, comedy, drama, contests, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, desktop publishing, animation, current events, and multimedia presentations; entertainment services in the nature of an ongoing television comedy, drama, science fiction, animated, action, adventure and documentary provided through television, cable, the internet, and wireless communication networks; entertainment services, namely, providing a variety of images of people, places, living creatures, imaginary creatures, and movie characters, over the internet; publication of books, magazines, newspapers, periodicals, newsletters, guides, quizzes, tests, journals and manuals on magnetic or optical data media featuring general entertainment information on a variety of topics; multimedia publishing of books, magazines, newspapers, periodicals, newsletters, guides, quizzes, tests, journals and manuals on magnetic or optical data media; music publishing services, namely, publication of music online; rental of video recordings, audio recordings, and computer game programs and video games including game cartridges for use with electronic games apparatus; distribution of radio programs and television programs for others; rental and leasing of televisions and radios; distribution or rental of motion pictures films; rental of movie projectors and accessories; provision of information in the field of entertainment; providing information relating to entertainment and education provided on-line from a computer database or a global computer network relating to movies, motion pictures, documentaries, films, television programs, graphics, animation, and multimedia presentations; non-downloadable electronic publications in the nature of books, magazine, newspapers, periodicals, newsletters, guides, quizzes, tests, journals and manuals in the field of movies, motion pictures, documentaries, films, television programs, graphics, animation, multimedia presentations, videos and dvds, high density optical discs, and other audiovisual works viewable over computer networks and global communications networks; providing information concerning movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia entertainment presentations over computer networks and global communication networks; providing on-line computer databases in the field of general news and information regarding movies, motion pictures, documentaries, films, and television programs; rental services, namely, rental of cinema films, documentary films, motion pictures, films, sound recordings, video games, multimedia entertainment presentations, electronic books and publications, video recordings, pre-recorded videotapes, digital video disks, musical recordings, multimedia recordings, and computer games; rental services, namely, rental of cinema films, documentary films, motion pictures, films, sound recordings, video games, multimedia entertainment presentations, electronic books and publications, video recordings, pre-recorded videotapes, digital video disks, musical recordings, multimedia recordings, and computer games via global communications networks; providing information, reviews and personalized recommendations in the field of entertainment; providing information, reviews, and personalized recommendations in the field of entertainment via global communications networks; providing information relating to contests and games; providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of entertainment, comics, screenplays, books, and short stories; providing a website featuring information in the field of entertainment; entertainment services, namely, conducting on-line contests; providing news and information in the field of entertainment relating to information, contests, text, video, audio, and publications all related to entertainment; providing reviews for television, movies, and entertainment; providing a website featuring non-downloadable movies and videos featuring [indicate subject matter] via a video-on-demand service; consultancy in the field of entertainment and the entertainment industry, namely, film and video production consulting services; providing information on entertainment, movies, and television shows via social networks; provision of information relating to entertainment; publication of periodicals; providing non-downloadable electronic publications in the nature of books, magazines, newspapers, periodicals, newsletters, guides, quizzes, tests, journals and  manuals in the field of movies, motion pictures, documentaries, films, television programs, graphics, animation and, multimedia presentations, videos, dvds, and other audiovisual works; publication of electronic books and journals; publication of books, magazines, newspapers, periodicals, newsletters, guides, quizzes, tests, journals and manuals in the field of movies, motion pictures, documentaries, films, television programs, graphics, animation, and multimedia presentations on magnetic or optical data media; publication of music online; rental of videos, audio recordings, and games including game cartridges for use with electronic games apparatus; entertainment services, namely, provision of multimedia programs in the nature of radio and television entertainment, namely, ongoing television and radio programs, on-line games, production of films, a website featuring non-downloadable prerecorded music  and video recordings featuring [indicate subject matter] via the Internet; organization of sports competitions; entertainment services, namely, providing on-line reviews of books, movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia entertainment presentations, videos and dvds, and other audiovisual works through computer and communications networks; providing entertainment information through computer and communications networks; providing information regarding movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia entertainment presentations, videos and dvds, and other audiovisual works over computer networks and global communication networks; providing entertainment and educational databases featuring general news and information regarding movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia entertainment presentations, videos and dvds, and other audiovisual works; providing information and commentary in the field of entertainment and education via global computer network, namely, information in the field of music, books, movies, motion pictures, television programs, games, toys, sporting goods, electronics, multimedia presentations, videos and dvds, and other household and consumer goods; entertainment services, namely, providing on-line non-downloadable prerecorded audio programs in the field of music, books, movies, motion pictures, television programs, games, toys, sporting goods, electronics, multimedia presentations, videos and dvds, and other household and consumer goods; entertainment services, namely, providing clips of prerecorded audio, visual, and audiovisual works via wireless networks; providing on-line computer games and on-line interactive stories; providing on-line newsletters and blogs featuring entertainment, movies, television, audiovisual works, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contests, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, publishing, animation, current events, and multimedia presentations; publication of excerpts from books, periodicals, and literary works, and providing virtual environments in which users can interact for recreational, leisure, or entertainment purposes; providing information, news, articles, and commentary in the field of entertainment, including, movies, television, audiovisual works, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contests, visual works, games, gaming, festivals, museums, parks, cultural events, converts, publishing, animation, current events, and multimedia presentations; providing information, news, articles, and commentary in the field of education and educational institutions; educational and entertainment services in the nature of podcasts, webcasts, and continuing programs featuring news and commentary in the field of movies, television programs, audiovisual works, music, audio works, books, theatre, literary works, sporting events, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contest, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, publishing, animation, current events, and multimedia presentations accessible via the internet or other computer on communications networks; providing on-line non-downloadable pre-recorded audio, audiovisual, and multimedia works featuring entertainment, movies, television, audiovisual works, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contests, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, publishing, animation, current events, and multimedia presentations via the internet or other computer or communications networks; entertainment services, namely, providing online electronic games; entertainment services, namely, providing online video games; electronic games services provided by means of the internet; providing a computer game for use network-wide by network users; providing on-line information relating to computer games and computer enhancements for games; providing an on-line non-downloadable entertainment database featuring online non-downloadable digital games, movies, television shows, music, and other digital text, audio, and video files featuring books, magazines, news, and general information; providing a website featuring entertainment information and product reviews in the field of audio, video and audiovisual content, namely, movies, tv shows, videos, and music; providing news and information in the field of entertainment relating to product reviews and recommendations, all regarding audio, video, and audiovisual content in the nature of recordings featuring movies, tv shows, videos and music; providing an on-line non-downloadable searchable database featuring audio, video, and audiovisual content available through the internet, telecommunications networks, and wireless telecommunications networks in the field of entertainment; providing entertainment information regarding audio, video, and audiovisual content via social networks; providing information on entertainment, movies, and television shows via social networks; provision of information, consultancy, and advisory services relating to all of the aforesaid services all of the foregoing excluding entertainment services providing information about fashion; providing online computer games

 

 

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).

 

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.

 

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS - ADVISORY

 

The application identifies services that may be classified in an additional class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 8 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§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.

 

 

The examining attorney apologizes for the delay in issuing this requirement.

 

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Michele-Lynn Swain/

Examining Attorney

Law Office 116

571-272-9232

michele.swain@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 18, 2019 for

U.S. Trademark Application Serial No. 88225693

 

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. 

 

 

/Michele-Lynn Swain/

Examining Attorney

Law Office 116

571-272-9232

michele.swain@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 October 18, 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.”