To: | Imagicomm Studios LLC (ip@nelsonmullins.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88333735 - BUFFALO WHISPERER - 043643/09227 |
Sent: | 5/28/2019 6:16:48 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88333735
MARK: BUFFALO WHISPERER
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CORRESPONDENT ADDRESS: NELSON MULLINS RILEY & SCARBOROUGH LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Imagicomm Studios LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/28/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE RECORDS – NO CONFLICTING MARKS NOTED
DISCLAIMER OF DESCRIPTIVE WORDING REQUIRED
In this case, applicant must disclaim the wording “BUFFALO” all the wording in the mark because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
As made clear by the identification of goods and services, the applicant’s recordings and entertainment service feature a bison rancher. The term “buffalo” refers to, in part, the American bison. The American Heritage Dictionary of the English Language, (5th ed. 2019). It is likely the applicant’s goods and services will address, at least in part, buffalo. Accordingly, the word “BUFFALO” in the proposed mark is merely descriptive for a feature, i.e., the subject matter, of the goods and services and must be disclaimed part from the mark as shown.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BUFFALO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF GOODS AND SERVICES – CLARIFICATION REQUIRED
The identification of goods and services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
International Class 9:
The wording “downloadable entertainment programs, namely, downloadable multimedia files containing videos relating to programs featuring a bison rancher provided via a video-on-demand service” is indefinite because it is unclear whether the videos are about different programs about a bison rancher or if the videos are about different programs about a bison rancher.
International Class 41:
The wording “entertainment services, namely, an on-going series featuring a bison rancher provided through the media of television, cable and broadband systems, via the Internet, and portable and wireless communication devices” is indefinite. The applicant must clarify the form of the services and the nature of media by which they are provided.
The wording “providing on-going non-downloadable entertainment series featuring a bison rancher via a video-on-demand service” is indefinite. The applicant must clarify the form of the entertainment services.
Applicant may adopt the following identification, if accurate:
“digital media, namely, pre-recorded digital video discs, digital versatile discs, DVDs, downloadable audio and video recordings, and high definition digital discs featuring programming relating to a bison rancher; downloadable entertainment programs, namely, downloadable multimedia files containing videos about a bison rancher provided via a video-on-demand service,” in International Class 9;
“entertainment services, namely, an on-going television series featuring a bison rancher provided through the media of television, cable and broadband systems, the Internet, and communication systems for portable and wireless communication devices; providing entertainment in the nature of an on-going non-downloadable television series featuring a bison rancher via a video-on-demand service; providing information in the field of entertainment provided via the Internet, and portable and wireless communication devices,” in International Class 41.
Trademark ID Manual: 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.
QUESTIONS REGARDING THE INSTANT OFFICE ACTION
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.
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.
REPRESENTATION RULES CHANGES - ADVISORY
In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO.
In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions. All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct.
These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register. See the U.S. Counsel Rule change webpage for more information.
/Martha L. Fromm/
Trademark Examining Attorney
U.S. Patent and Trademark Office - Law Office 106
571-272-9320
Martha.Fromm@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.