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: 4/30/2019

 

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

 

SUMMARY OF ISSUES:

• Prior-Filed Application
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Services Requirement

 

Prior-Filed Application

 

The filing date of pending U.S. Application Serial No. 88064583 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Upon receipt of applicant’s response resolving the following refusal(s) and requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No. 88064583.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4763028, 4699763, and 5414516.  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.

 

Comparison 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).

 

Applicant’s mark is “TUBI” in standard character form.

 

The mark in Registration No. 4763028 is “TUBI TV” in standard character form.

 

The mark in Registration No. 4699763 is “TUBEE” in standard character form.

 

The mark in Registration No. 5414516 is “TUBI” in standard character form.

 

Comparison of Applicant’s Mark and the Mark in Registration No. 4763028

 

Applicant’s mark and the mark in Registration No. 4763028 both contain the identical wording “TUBI”.  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).  Further, because of this shared identical wording, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).

 

Further, the remaining wording in registrant’s mark, “TV”, does not meaningfully distinguish the marks, as this wording has 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

Accordingly, applicant’s mark and registrant’s mark are confusingly similar.

 

Comparison of Applicant’s Mark and the Mark in Registration No. 4699763

 

Applicant’s mark is solely comprised of the word “TUBI” and the mark in Registration No. 4699763 is solely comprised of the word “TUBEE”.  Again, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank, 228 USPQ at 690-91, aff’d sub nom. Canadian Imperial Bank of Commerce, 811 F.2d at 1495; In re Corning Glass Works, 229 USPQ at 66; In re Pellerin Milnor Corp., 221 USPQ at 560; TMEP §1207.01(b)(ii)-(iii).

 

Further, the words “TUBI” and “TUBEE” are essentially phonetic equivalents and thus sound similar.  There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.  See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv).  The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Accordingly, applicant’s mark and the mark in Registration No. 4699763 are confusingly similar.

 

Comparison of Applicant’s Mark and the Mark in Registration No. 5414516

 

Applicant’s mark is “TUBI” in standard character form and Mark in Registration No. 5414516 is “TUBI” in standard character form.  Thus, these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the 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).

 

Applicant identifies the following services:

 

Class 41:         Entertainment services in the nature of ongoing television series and movies in the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, history, horror, international, musical, mystery, romance, science fiction, sports, thrillers, war, and westerns; entertainment services in the nature of conducting exhibitions and conventions concerning television and film, and television and film characters; entertainment services in the nature of development, creation, production, distribution, and post-production of motion picture films, television shows, special events, and multimedia entertainment content; entertainment services in the nature of a live theatrical, musical or comedic performance; amusement park services; fan club services; production and distribution of motion picture films and television shows; providing entertainment services via a global communication network in the nature of online games and websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series; providing a website featuring entertainment information; providing online computer, electronic and video games; providing temporary use of non-downloadable interactive games; providing non-downloadable films and television shows via a video-on-demand transmission service; providing information, reviews, and recommendations regarding movies and television shows via a website and video-on-demand transmission services

 

Registration No. 4763028 identifies the following services:

 

Class 38:         Streaming of audiovisual and multimedia content via the Internet through connected devices; electronic transmission and delivery of audiovisual and multimedia content via connected devices; video-on-demand transmission services.

 

Registration No. 4699763 identifies the following services:

 

Class 9:           Computer application software for mobile phones, portable media players, and handheld computers, namely, software for allowing users to play videos streamed from within the user's devices and from other sources

 

Registration No. 5414516 identifies the following services:

 

Class 38:         Streaming of audio, visual and audiovisual material via a global computer network.

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

Further, 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).

 

Here, the attached Internet evidence, consisting of screenshots showing goods and services from Amazon, Disney, Hulu, Netflix, and Universal, establishes that the same entity commonly provides many of the relevant goods and/or services and markets these goods and/or services under the same mark.  Specifically, this evidence shows the relatedness of the following services:

 

• Applicant’s “Entertainment services in the nature of ongoing television series and movies in the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, history, horror, international, musical, mystery, romance, science fiction, sports, thrillers, war, and westerns; … entertainment services in the nature of development, creation, production, distribution, and post-production of motion picture films, television shows, special events, and multimedia entertainment content; … amusement park services; … production and distribution of motion picture films and television shows;  providing entertainment services via a global communication network in the nature of … websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series; providing a website featuring entertainment information; … providing non-downloadable films and television shows via a video-on-demand transmission service; providing information, reviews, and recommendations regarding movies and television shows via a website and video-on-demand transmission services”, on the one hand, and the video streaming and/or video on-demand services in Registration Nos. 4763028 and 5414516, on the other hand; and

 

• Applicant’s “Entertainment services in the nature of ongoing television series and movies in the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, history, horror, international, musical, mystery, romance, science fiction, sports, thrillers, war, and westerns; … entertainment services in the nature of development, creation, production, distribution, and post-production of motion picture films, television shows, special events, and multimedia entertainment content; … amusement park services; … production and distribution of motion picture films and television shows;  providing entertainment services via a global communication network in the nature of … websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series; providing a website featuring entertainment information; … providing non-downloadable films and television shows via a video-on-demand transmission service; providing information, reviews, and recommendations regarding movies and television shows via a website and video-on-demand transmission services”, on the one hand, and the video streaming software in Registration No. 4699763, on the other hand.

 

 

 

 

 

 

 

           

 

Thus, these services of applicant are considered related to registrants’ goods and/or services 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).

 

Further, the examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the remaining services in the application are likely to emanate from a single source and under the same mark as (1) the video streaming and/or video on-demand services in Registration Nos. 4763028 and 5414516 and (2) the video streaming software in Registration No. 4699763.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Accordingly, applicant’s services and registrants’ goods and/or services are related under Section 2(d).

 

Conclusion

 

Finally, the overriding concern of Section 2(d) is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

For the reasons discussed above, registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF SERVICES REQUIREMENT

 

The identification of services must be clarified because it is indefinite, as further explained below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Specifically, the wording “Entertainment services in the nature of ongoing television series and movies in the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, history, horror, international, musical, mystery, romance, science fiction, sports, thrillers, war, and westerns” is indefinite because the nature of the services are unclear, as applicant has not specified how this entertainment content is broadcasted.  The following substitute wording and guidance are suggested, if accurate: “Entertainment services, namely, providing an ongoing television series and movies in the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, history, horror, international, musical, mystery, romance, science fiction, sports, thrillers, war, and westerns, all delivered by {indicate form of broadcast medium, e.g., television, radio, satellite, the internet, etc.}”.

 

The wording “entertainment services in the nature of development, creation, production, distribution, and post-production of motion picture films, television shows, special events, and multimedia entertainment content” is indefinite because the specific wording “special events” is ambiguous.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must clarify these services by further explaining their nature and/or purpose.  The following wording is suggested, if accurate: “entertainment services in the nature of development, creation, production, distribution, and post-production of motion picture films, television shows, and multimedia entertainment content; entertainment services, namely, arranging and conducting special events for social entertainment purposes”.

The wording “entertainment services in the nature of a live theatrical, musical or comedic performance” is indefinite because it contains the word “or” and this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

If accurate, the following substitute wording is suggested: “entertainment services in the nature of live theatrical performances, live musical performances, and live comedic performances”

The wording “providing entertainment services via a global communication network in the nature of online games and websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials” is indefinite because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If accurate, the following wording is suggested: “providing entertainment services via a global communication network in the nature of online video games; providing entertainment services via a global communication network in the nature of websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials”.

 

The wording “providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series” is indefinite because the nature of “multimedia digital content” is unclear.  Applicant must further describe the nature of this multimedia content—for example, by specifying its form.  If accurate, the following wording and guidance is suggested: “providing online non-downloadable video clips and other multimedia digital content in the nature of {specify form of multimedia digital content, e.g., online non-downloadable magazines} containing audio, video, artwork, and/or text, all in the field of an ongoing television series”.

 

The following identification is suggested, if accurate:

 

Class 41:         Entertainment services, namely, providing an ongoing television series and movies in the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, history, horror, international, musical, mystery, romance, science fiction, sports, thrillers, war, and westerns, all delivered by {indicate form of broadcast medium, e.g., television, radio, satellite, the internet, etc.}; entertainment services in the nature of conducting exhibitions and conventions concerning television and film, and television and film characters; entertainment services in the nature of development, creation, production, entertainment services in the nature of development, creation, production, distribution, and post-production of motion picture films, television shows, and multimedia entertainment content; entertainment services, namely, arranging and conducting special events for social entertainment purposes; entertainment services in the nature of live theatrical performances, live musical performances, and live comedic performances; amusement park services; fan club services; production and distribution of motion picture films and television shows; providing entertainment services via a global communication network in the nature of online video games; providing entertainment services via a global communication network in the nature of websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; providing online non-downloadable video clips and other multimedia digital content in the nature of {specify form of multimedia digital content, e.g., online non-downloadable magazines} containing audio, video, artwork, and/or text, all in the field of an ongoing television series; providing a website featuring entertainment information; providing online computer games, online electronic games, and online video games; providing temporary use of non-downloadable interactive games; providing non-downloadable films and television shows via a video-on-demand transmission service; entertainment information services, namely, providing information, reviews, and recommendations regarding movies and television shows via a website and video-on-demand transmission services

 

Stylized text indicates changes.

 

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.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  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. 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

/Matthew Tully/

Matthew Tully

Trademark Examining Attorney

Law Office 105

(571) 270-5943

matthew.tully@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 4/30/2019 FOR U.S. APPLICATION SERIAL NO. 88296591

 

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 4/30/2019 (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.