To: | Mediacom Communications Corporation (trademarks.us@dentons.com) |
Subject: | U.S. Trademark Application Serial No. 88227136 - X XTREAM ARENA POWERED BY MEDIACOM - 15031508.018 |
Sent: | September 16, 2019 04:17:43 PM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88227136
Mark: X XTREAM ARENA POWERED BY MEDIACOM
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Correspondence Address:
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Applicant: Mediacom Communications Corporation
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Reference/Docket No. 15031508.018
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: September 16, 2019
This Office action is in response to applicant’s communication filed on September 9, 2019. The following requirements have been satisfied: disclaimer statement and fee for extra class and amended identification of goods in Class 25, namely, “hats, shirts” (Class 41 services, namely, “providing stadium facilities for the presentation of entertainment events, sports events and cultural events” were previously accepted). TMEP §§713.02, 714.04.
However, the identification of goods and services remain indefinite. The following requirements are now made FINAL: definite identification of goods and services statement. See37 C.F.R. §2.64(a).
Final Requirement—Definite Identification of Goods and Services
In the Office Action of March 11, 2019, the examining attorney required a clarification of the identification “merchandise related thereto” because it was indefinite and must be clarified. Moreover, such wording was required to be deleted from Class 41. TMEP §1402.01. The following suggestions were made:
Class 14: Merchandise, namely, metal key chains
Class 16: Merchandise, namely, stickers, posters
Class 25: Merchandise, namely, [specify types of clothing, e.g., shirts, shorts, jackets]
Class 41: Providing stadium facilities for the presentation of entertainment events, sports events and cultural events
In the response of September 9, 2019, the applicant’s amended identification of goods in Class 25 and identification of services in Class 41 are still not acceptable.
Specifically, the applicant did not delete the wording “merchandise related thereto” from Class 41. This wording indicates goods and does not belong in Class 41 and therefore must be deleted.
Therefore, the requirement of a definite identification of goods and services statement are maintained and made final.
Applicant may adopt the following identification of goods, if accurate:
Class 25: Clothing, namely, [t-shirts, jackets, pants]; shirts; hats
Class 41: Providing stadium facilities for the presentation of entertainment events, sports events and cultural events
See TMEP §1402.01.
Additions to Identification Not Permitted
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. 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 goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Section 1(b) Requirements for Combined Applications
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or 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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). 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).
For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Class Fees
The fee for adding classes to a regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS). See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).
See links below on how to properly respond to a final action.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/William T. Verhosek/
William T. Verhosek
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 114
571-272-9464
RESPONSE GUIDANCE