Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) 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 17, 2019

 

This Office action is in response to applicant’s communication filed on June 12, 2019.

 

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

This Office action is supplemental to and supersedes the previous Office action issued on March 22, 2019 in connection with this application.  The assigned trademark examining attorney is issuing a new requirement for Attorney bar information based on a USPTO rule change that became effective on August 3, 2019.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Attorney Bar Information

            •  Identification of Goods and Services Requirement Continued and Maintained

 

Applicant must respond to all issues raised in this Office action and the previous March 22, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

ATTORNEY BAR INFORMATION REQUIRED

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Attorney statement required.  Applicant’s attorney must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

Identification of Goods and/or Services Must be Amended

The identification of goods and services remains partially indefinite in Classes 9, 35 and 41. Applicant must specify the nature of gods and services acceptable within each class and within the scope of the originally identified recitation. Applicant may adopt the following identification, if accurate:

 International Class 9: “Computer software, namely, downloadable computer software featuring an entertainment database for providing, purchasing, renting, and accessing downloadable and non-downloadable movies, TV shows, videos, and music; Pre-recorded downloadable audio recordings featuring entertainment programming; pre-recorded downloadable video recordings featuring entertainment programming; pre-recorded downloadable audio and visual recordings featuring entertainment programming; audiovisual works, data files, and electronic works in the nature of downloadable audiovisual files, all of the aforementioned downloadable via the internet or other computer or communications network featuring entertainment programming; Computer application software for mobile devices for use in providing users with access to searchable databases; software for wireless content delivery; downloadable software featuring an entertainment database featuring information, news, reviews and user comments about television shows, motion picture films, celebrities, actors, and the entertainment industry for use on computers and mobile devices; software for accessing information on the Internet or other computer or communications network; software for formatting and converting content, text, visual works, audiovisual works, data, files and electronic works into a format compatible with portable electronic devices and computers; software enabling content, text, visual works, audiovisual works, data, files and electronic works to be downloaded to and accessed on a computer or other portable consumer electronic device; Computer application software for organizing, transmitting, manipulating, processing, streaming, playing and reviewing text, audio, video, images, and other multimedia content on digital electronic devices; computer application software that enables users to generate customized recommendations of videos, television programs, and motion pictures based on user preferences; computer application software for use in sharing, researching, commenting on, and rating videos, television programs, motion pictures, celebrities, and other information about the entertainment industry; Computer application software for use with mobile, portable and handheld devices that allow users to purchase movie tickets for movies, to view movie trailers, videos, movie reviews, to view and manipulate information about movies, show times, theater locations, and other entertainment events, and to share the foregoing information among other users; computer application software for accessing, searching, browsing, displaying, reporting, reading, recommending, sharing, posting in social media, organizing, tracking, and streaming entertainment events and information and news content related to the entertainment industry; Computer software for streaming, broadcasting, transmitting, distributing, reproducing, organizing and sharing music, audio, video, games, audiovisual, multimedia content and other data via a global communications network; Computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, viewing, storing and organizing text, data, images, audio and video files, and multimedia content; Computer software to enable users to view or listen to audio, video, text and multimedia content; Computer software for creating and providing user access to searchable databases of information and data; search engine software; computer software for facilitating payments and online transactions; computer software for use in disseminating advertising for others; Computer software for use in sharing information about products, services, and deals; computer software for electronic storage of data; computer software for image and speech recognition; computer software for home automation; computer software for purchasing, accessing and viewing movies, TV shows, videos, music, and multimedia content; internet browser software; downloadable music files; downloadable audiovisual and multimedia content featuring fiction and non-fiction stories on a variety of topics provided via a video-on-demand service; downloadable motion pictures and television shows featuring fiction and non-fiction stories on a variety of topics, and audio and video recordings featuring fiction and non-fiction stories on a variety of topics; downloadable audio files, multimedia files, text files, written documents, audio material, video material featuring fiction and non-fiction content on a variety of topics; Downloadable mobile applications to enable users access to music, audio, video, games, audiovisual, multimedia content and other data; digital media streaming devices; portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks and electronic and mechanical parts and fittings thereof; computers, tablet computers, audio and video players, electronic personal organizers, personal digital assistants, and global positioning system devices and electronic and mechanical parts and fittings thereof; magnetically encoded gift cards; computer software for the collection, organizing, modifying, book marking, transmission, storage, and sharing of data and information; software for text, image and sound transmission and display; computer software for online shopping; handheld devices for controlling televisions, speakers, amplifiers, stereo systems, and home entertainment systems, namely, stereos, loudspeakers, audio speakers, amplifiers, equalizers, crossovers, speaker housings, CD players, remote controls, audio and video processors, audio video tuners, liquid crystal displays, plasma display panels with the capability to wirelessly transmit audio and/or video signals; computer software for information management; database synchronization software; computer programs for accessing, browsing, and searching online databases; software for the synchronization of data between a remote station or device and a fixed or remote station or device; software for telecommunication and communication via local or global communications networks; software for access to communications networks including the Internet; media players, voice recording and voice recognition apparatus; televisions; television receivers; television monitors; stereo systems, home theater systems, and home entertainment systems comprised of stereos, loudspeakers, audio speakers, amplifiers, equalizers, crossovers, speaker housings, CD players, remote controls, audio and video processors, audio video tuners, liquid crystal displays, plasma display panels with the capability to wirelessly transmit audio and/or video signals; computer operating system software; computer software for configuring, operating and controlling mobile devices, wearable devices, mobile phones, computers, and computer peripherals, and audio and video players; computer software for creating searchable databases of information and data for peer-to-peer social networking databases; computer game software; downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals and other downloadable electronic publications in the nature of books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring animated cartoons; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, the aforesaid goods”

International Class 35: “Advertising; business management; business administration; Providing an on-line commercial information directory; dissemination of advertising for others via an on-line electronic communications network; Providing a searchable on-line advertising guide featuring the goods and services of others; database management services; on-line ordering services featuring movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, videos and DVDs, and other audiovisual works; Providing online business directory information, namely, providing information regarding the location/addresses of movie theaters; computerized on-line searching and ordering service featuring movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, and other audiovisual works in the form of videocassettes, compact disks, DVDs, digital downloads and direct digital transmission; association services, namely, providing opportunities for exchange of information and conversation regarding a wide variety of topics by means of product reviews; directory services to help locate people, places, organizations, phone numbers, network home pages, and electronic mail addresses; Providing an online searchable database featuring employment and career opportunities and business, employment and professional information; providing an online searchable database featuring movie, motion picture and television talent casting employment opportunities and talent casting employment information; providing online computer databases and online searchable databases in the fields of business and professional networking; providing online career networking services and information in the fields of employment, recruitment, job resources, and job listings; providing networking opportunities for individuals seeking employment; on-line professional networking opportunities; Online retail store services featuring streamed and downloadable pre-recorded audio, video and audiovisual content in the nature of downloadable audio works, visual works, audiovisual works, computer software and hardware, video games, consumer electronics, and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; compiling of information into computer databases; comparison shopping services namely, promoting the goods and services of others; computerized database and file management; {clarify nature of “creating indexes of information, sites and other resources”, e.g., compiling information in order to create indexes of information into databases for others available on global computer networks and other electronic and communications networks; order fulfillment services namely, services relating to order processing; {“promoting the goods and services of others” is beyond scope of originally identified services}; database management services”

 

International Class 41: “Education, namely, providing information, news, and commentary in the field of current events, entertainment, cultural events, sports, physical fitness, arts and literature, education, music and cinema, history; entertainment, namely, continuing programs in the fields of comedy, drama, horror, reality programming, action, variety, adventure, sports, musicals, current events and entertainment news, documentary and animation accessible by means of television, satellite, audio, video, web-based applications, mobile phone applications, and computer networks; organizing community sporting and cultural activities; Entertainment services in the nature of a video program, featuring reviews, news, and information in the field of motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics, namely, an ongoing video program accessible by television, cable, the Internet and wireless communications networks; providing an online non-downloadable video program featuring reviews, news, and information in the field of motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics; providing information via a global computer network in the field of entertainment and entertainment-related topics; providing information on motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics via social networks; television schedule information services; providing an online computer database featuring reviews, news, information and content in the field motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics; movie schedule information services; entertainment in the nature of conducting contests, competitions and online computer games in the field of entertainment; entertainment services, namely, publishing journals and blogs featuring information and opinions in the field of entertainment; providing on-line newsletters featuring reviews, news and information in the field of motion picture films, television programs, celebrities, entertainment industry and entertainment-related topics; providing a website with information in the fields of motion pictures, television shows, celebrities, entertainment industry and entertainment-related topics; entertainment services in the nature of non-downloadable videos featuring information in the fields of motion pictures, television shows, celebrities, entertainment industry and entertainment-related topics; providing information in the field of movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, videos and DVDs, other audiovisual works, celebrities and the entertainment industry; providing a website that displays movie rankings; providing a website featuring a ranking system measuring popularity of celebrities and identifying trends in public perception and awareness of movie personalities; providing a website featuring entertainment trivia; providing a web site featuring movie, motion picture and television casting and production information; arranging for ticket reservations for film screenings, festival events, shows and other entertainment events; online ticket agency services for film screenings, festival events, shows and other entertainment events; booking agency services for cinema tickets; booking of entertainment events, booking seats for shows, booking agency services for cinemas, film festivals and events; film exhibition services for entertainment purposes; hosting and organizing awards relating to films to demonstrate excellence in the field of entertainment; production of podcasts and vodcasts; providing on-line computer games and on-line interactive stories; publication of film reviews, reviews of entertainment products including television programs, radio programs, podcasts, vodcasts and computer games; entertainment services, namely, providing interactive educational and entertainment quizzes and games; providing a website featuring non-downloadable audio, video and audiovisual content in the nature of recordings featuring movies, TV shows, videos and music; provision of non-downloadable videos featuring programs on a wide variety of entertainment topics via a video-on-demand service; provision of non-downloadable films, movies and television shows in the fields of comedy, drama, horror, reality programming, action, variety, adventure, sports, musicals, current events and entertainment news, documentary and animation via a video-on-demand service; distribution and rental of entertainment content, namely, computerized on-line searching and ordering service featuring movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, and other audiovisual works in the form of digital downloads and direct digital transmission viewable over computer networks and global communication networks; film and video rental services; rental of audio-visual works, specifically, motion pictures, television programming, videos, music videos, and music; film, movie, TV show and video production and distribution; providing a searchable database featuring audio, video and audiovisual content through the Internet, telecommunications networks and wireless telecommunications networks in the field of movies, TV shows, videos and music; digital audio, video and multimedia publishing services; entertainment services, namely, providing non-downloadable prerecorded music and audio programs featuring fiction and non-fiction stories on a variety of topics, and information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment services, namely, live visual and audio performances, musical, variety, news, dramatic and comedy shows; entertainment services, namely, providing a website featuring the ratings and reviews of television, movies, videos, music, screenplays, scripts, books and video game content; entertainment information; arranging of contests; sweepstake services; sweepstake services provided over a global computer network hosting online sweepstakes and contests for others; publishing of books, magazines, periodicals, literary works, visual works, audio works, and audiovisual works; presenting live musical concerts and performances; entertainment services, namely, profiling of musicians, artists and bands by providing non- downloadable video clips of musical performances over a global computer network; providing non-downloadable interactive resource for searching, selecting, managing, and viewing audiovisual content in the nature of recordings featuring movies, TV shows, videos and music; providing online newsletters in the field of television, movies, and videos via e-mail; providing online electronic publications, not downloadable; publication of texts, other than publicity texts; writing of texts, other than publicity texts; movie theatre presentations; arranging and conducting of concerts; entertainment, amusements, namely, interactive amusement arcades; virtual reality and video game services provided on-line from a computer network; production of television programs; rental of sound recordings; subtitling; television entertainment namely, production of motion pictures, television shows, multimedia entertainment content for viewing on television; organization of sports competitions; organization of exhibitions for cultural or educational purposes; videotape editing; videotaping; education information, namely, providing information about education; providing an on-line link to current events and reference material relating to movies, motion pictures, documentaries, films, television programs, graphics, animation and multimedia presentations, videos and DVDs and other audiovisual works”

 

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.

 

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).

 

Email or Telephone Response Encouraged

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

 

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)

 

 

/Julie Thomas/

Trademark Examining Attorney

Law Office 107

Phone: 571-272-1582

Email: julie.thomas@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 September 17, 2019 for

U.S. Trademark Application Serial No. 88236059

 

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. 

 

 

/Julie Thomas/

Trademark Examining Attorney

Law Office 107

Phone: 571-272-1582

Email: julie.thomas@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 September 17, 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.”