Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88412942

DATE:                                09/10/2019

NAME:                               khardley

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER:

Ms. Hardley,

 

Please revise the identification as you propose. 

 

Best regards,

Mark Passler 

On Aug 28, 2019, at 4:53 PM, Hardley, Keisha <Keisha.Hardley@uspto.gov> wrote:

Greetings,

 

I am contacting you because publication has been withdrawn to address issues with the identification of services. I am hoping to resolve this matter via examiner’s amendment. Please note the identifications that require amendment in addition to the suggestion noted below.

 

The portion of the ID, “distribution of books and magazines,” is misclassified and indefinite. “Distribution of hard goods, such as books and electronic data carriers, is not a Class 41 service. It could be a distributorship in Class 35 or a delivery service in Class 39.” Note Term ID 041-682 and see also TMEP 1402.11(f). Therefore, applicant must clarify and reclassify its services as appropriate. If the language “distribution of books” is removed for the identification the remainder will be acceptable in Class 041.

 

The portions of the IDs “entertainment services in the nature of performances rendered by musical artists through the medium of television, radio, and audio and video recordings; entertainment services, namely, performances by musical artists…recorded for future distribution” are unacceptable.

 

As stated in TMEP 1402.11(g), “For entertainment services such as those rendered by a musical group, the performance must be live.  The recording of a live concert or studio performance is not considered a service of the performing group.  Similarly, performances for the sole purpose of recording are not considered services. 

 

The production by another entity of a performance by a musical group for recordation would be a service, but an identification such as "live and recorded performances by a musical group" could not be accepted as a valid service identification unless the words "and recorded" were deleted.

 

Recorded entertainment usually takes the form of goods in Class 9, such as videotapes, audio cassettes, DVDs, CD-ROMs, etc.  This is consistent with the treatment of "distribution" of these products as goods and not services as discussed in §1402.11(f).See TMEP §§1301.01 et seq. regarding the criteria for determining whether an activity constitutes a service.” Accordingly, the Class 41 ID must be amended to specify only registrable activities and live performances.

 

Lastly, the portion of the ID, “entertainment, namely, providing films to users online via a communication network,” is overly broad. Pre-recorded downloadable films are Class 9 goods while the provision of online non-downloadable films is a Class 41 service.

 

 

As a result, the following is suggested with changes noted in bold:

 

“production, distribution and presentation of television and radio programs; distribution of television and radio programs for others; development and dissemination of educational materials of others in the field of music and entertainment; radio entertainment production and distribution; film and video production; production of motion picture films; distribution of motion picture films; television program syndication; entertainment in the nature of ongoing television programs in the field of music and entertainment; entertainment, namely, a continuing music and entertainment show distributed over television, satellite, audio, and video media; publication and distribution of books and magazines; entertainment in the nature of ongoing radio programs in the field of music; entertainment services in the nature of live performances rendered by musical artists through the medium of television, radio, and audio and video recordings; entertainment services, namely, performances by musical artists rendered live and recorded for future distribution; educational and entertainment services, namely, production and presentation of television shows before live audiences; entertainment services, namely, live, televised and movie appearances by a professional entertainer; conducting entertainment exhibitions in the nature of music festivals; entertainment services, namely, conducting exhibitions in the field of music and the arts; organizing exhibitions for entertainment purposes featuring music and the arts; publishing of web magazines; entertainment, namely, providing films, not downloadable to users online via a communication network”

 

 

To accept the amended identification, simply respond to this email indicating your acceptance. If a response is not received by Monday, September 2, 2019 a formal Office action will issue.

 

Regards,

 

Keisha M. Hardley
Trademark Examining Attorney

Law Office 112
United States Patent and Trademark Office
P: (571) 272-6945

F: (571) 273-6945

keisha.hardley@uspto.gov

 

 

 

Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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