NOTE TO THE FILE
SERIAL NUMBER: 88453035
DATE: 09/17/2019
NAME: jnelman
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT 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:From: Kimberly S. Grimsley <kim@olivergrimsley.com>
Sent: Tuesday, September 17, 2019 4:53 PM
To: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Subject: Re: Clarification Needed Regarding Application SN 88453035 SKYLARK
That single amendment is fine.
Best Regards,
Kim
Kimberly S. Grimsley, Esq.
Member,
Oliver & Grimsley, LLC
502 Washington Avenue, Suite 605
Towson, MD 21204
(443) 541-5680
(443) 541-5682 (Direct)
From: "Nelman, Jesse" <Jesse.Nelman@USPTO.GOV>
Date: Tuesday, September 17, 2019 at 4:38 PM
To: Grimsley Kimberly <kim@olivergrimsley.com>
Subject: RE: Clarification Needed Regarding Application SN 88453035 SKYLARK
That would be the single amendment. Please confirm that the single deletion is okay and I will issue an examiner’s amendment to take care of it. Sorry about not catching this issue sooner.
Best,
Jesse Nelman
Trademark Examining Attorney – Law Office 113
United States Patent & Trademark Office
(571) 272-0191 | jesse.nelman@uspto.gov
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Kimberly S. Grimsley <kim@olivergrimsley.com>
Sent: Tuesday, September 17, 2019 4:35 PM
To: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Cc: trademarks <trademarks@olivergrimsley.com>
Subject: Re: Clarification Needed Regarding Application SN 88453035 SKYLARK
Dear Jesse,
Thank you for the email. If the only change is the remove of “and distribution” in Class 41 where indicated, then the client is amenable to that amendment. Please let me know if there are any other amendments other than the one deletion.
Best Regards,
Kim
Kimberly S. Grimsley, Esq.
Member,
Oliver & Grimsley, LLC
502 Washington Avenue, Suite 605
Towson, MD 21204
(443) 541-5680
(443) 541-5682 (Direct)
From: "Nelman, Jesse" <Jesse.Nelman@USPTO.GOV>
Date: Monday, September 16, 2019 at 1:00 PM
To: Grimsley Kimberly <kim@olivergrimsley.com>
Subject: RE: Clarification Needed Regarding Application SN 88453035 SKYLARK
Hi Kim,
This application was approved for publication on August 22, 2019; however, approval of the application has been withdrawn to address the following issue.
The portion of the ID, “production and distribution of videos featuring fictional and non-fictional stories on a variety of topics and subjects of general human interest, namely, social justice, social issues, writing, storytelling, psychology, human behavior, moral panics, urban legends, conspiracy theories, culture, and folklore” is overbroad. Per TMEP §1402.11(f): Generally, the wording “production and distribution” is used in conjunction with the services of production and distribution of motion pictures and television programs.
The service of “production and distribution” involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. In this service, the ownership of the physical product does not leave the producer. The movie theatre or television stations "lease" (in a sense) the film or tape for a period of time and then return it to the producer. This is not the case when distribution relates to videotapes, audiotapes, or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer. The ownership of the physical product is transferred to the purchaser just as it is with clothing, toys, food products, or computers.
For this reason, the distribution of videotapes, audiotapes, and videodiscs is not acceptable as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in that class. It is possible that such distribution could be considered a distributorship service in Class 35, but that must be determined on a case-by-case basis. Distribution of one‘s own goods is not a service; it is merely a necessary part of doing business. In this case, the ID is ambiguous as to whether the applicant distributes videos as rentals or as goods transferred to the purchaser because videos are generally not rented or loaned out in manner noted above in the relevant TMEP section, above. Therefore, applicant must further clarify the nature of these services and specify services properly classified in 41. Alternatively, applicant may simply delete the wording “and distribution”.
I suggest the following, if accurate:
Class 35— On-line retail store services featuring subscription boxes containing assorted items in the fields of science fiction, crime and crime solving, horror, suspense, and storytelling, namely, equipment sold as a unit for play parlor games, table games, party games, role playing games, team building games and also fiction books on a variety of topics.
Class 41— Production of audio recording; Entertainment services, namely, providing podcasts featuring fictional and non-fictional storytelling on a variety of topics and subjects of general human interest, namely, social justice, social issues, writing, storytelling, psychology, human behavior, moral panics, urban legends, conspiracy theories, culture, and folklore; Production
and distributionof videos featuring fictional and non-fictional stories on a variety of topics and subjects of general human interest, namely, social justice, social issues, writing, storytelling, psychology, human behavior, moral panics, urban legends, conspiracy theories, culture, and folklore; Entertainment services in the nature of creation, development, and production of television programming; Entertainment services in the nature of the production and distribution of film, television series and short form multimedia entertainment content; Production of films.
Please let me know if applicant agrees to the amendment above.
Best,
Jesse Nelman
Trademark Examining Attorney – Law Office 113
United States Patent & Trademark Office
(571) 272-0191 | jesse.nelman@uspto.gov
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Kimberly S. Grimsley <kim@olivergrimsley.com>
Sent: Wednesday, August 21, 2019 3:40 PM
To: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Subject: Re: Clarification Needed Regarding Application SN 88453035 SKYLARK
Hi Jesse,
Great – thank you.
Best Regards,
Kim
Kimberly S. Grimsley, Esq.
Member,
Oliver & Grimsley, LLC
502 Washington Avenue, Suite 605
Towson, MD 21204
(443) 541-5680
(443) 541-5682 (Direct)
From: "Nelman, Jesse" <Jesse.Nelman@USPTO.GOV>
Date: Wednesday, August 21, 2019 at 3:24 PM
To: Grimsley Kimberly <kim@olivergrimsley.com>
Subject: RE: Clarification Needed Regarding Application SN 88453035 SKYLARK
Hi Kim,
This appears to be acceptable. I will enter the EA. Please let me know if you have any questions.
Best,
Jesse
From: Kimberly S. Grimsley [mailto:kim@olivergrimsley.com]
Sent: Wednesday, August 21, 2019 3:13 PM
To: Nelman, Jesse <Jesse.Nelman@USPTO.GOV>
Cc: Karri Moorehead <karri@olivergrimsley.com>; Tina Neuman <tina@olivergrimsley.com>
Subject: Re: Clarification Needed Regarding Application SN 88453035 SKYLARK
Dear Jesse,
I have spoken with the client regarding your requested changes and the client is amenable to the amendments with one addition noted in red below in Class 35.
Class 35— On-line retail store services featuring subscription boxes containing assorted items in the fields of science fiction, crime and crime solving, horror, suspense, and storytelling, namely, equipment sold as a unit for play parlor games, table games, party games, role playing games, team building games and also fiction books on a variety of topics.
The Client agrees to the changes in Class 41 as you have requested.
Please let me know if you require any additional information.
Best Regards,
Kim
Kimberly S. Grimsley, Esq.
Member,
Oliver & Grimsley, LLC
502 Washington Avenue, Suite 605
Towson, MD 21204
(443) 541-5680
(443) 541-5682 (Direct)
From: "Nelman, Jesse" <Jesse.Nelman@USPTO.GOV>
Date: Tuesday, August 20, 2019 at 7:43 PM
To: Grimsley Kimberly <kim@olivergrimsley.com>, Karri Moorehead <karri@olivergrimsley.com>, Tina Neuman <tina@olivergrimsley.com>
Subject: Clarification Needed Regarding Application SN 88453035 SKYLARK
Hello,
I’m the trademark examining attorney assigned to U.S. APPLICATION SERIAL NO. 88453035 SKYLARK. There’s an issue that I’d like to speak with you about that can be resolved with applicant’s agreement. Due to Office deadlines, I will need a response from you no later than August 21, 2019. If I don't hear from you by this time, I will issue an Office action with respect to the relevant issue, to which you will have an opportunity to respond.
Identification of Services
The identification of services is indefinite. Importantly, the wording “assorted items” is indefinite and overly broad. Applicant must specify the nature of the items. Based on the research I’ve conducted regarding applicant’s subscription boxes, I’ve made certain suggestions. Additionally, the wording “featuring works of fiction, storytelling and subjects of general human interest” is indefinite and unclear. Applicant must further specify the subject matter. I suggest the following, if accurate:
Class 35— On-line retail store services featuring subscription boxes containing assorted items in the fields of science fiction, crime and crime solving, horror, suspense, and storytelling, namely, equipment sold as a unit for play parlor games, table games, party games, role playing games and also fiction books on a variety of topics.
Class 41— Production of audio recording; Entertainment services, namely, providing podcasts featuring fictional and non-fictional storytelling on a variety of topics and subjects of general human interest, namely, social justice, social issues, writing, storytelling, psychology, human behavior, moral panics, urban legends, conspiracy theories, culture, and folklore; Production and distribution of videos featuring fictional and non-fictional stories on a variety of topics and subjects of general human interest, namely, social justice, social issues, writing, storytelling, psychology, human behavior, moral panics, urban legends, conspiracy theories, culture, and folklore; Entertainment services in the nature of creation, development, and production of television programming; Entertainment services in the nature of the production and distribution of film, television series and short form multimedia entertainment content; Production of films.
Please let me know if applicant agrees to the amendments above.
If you have any questions, please contact me. I will be happy to assist you.
Sincerely,
Jesse Nelman
Trademark Examining Attorney – Law Office 113
United States Patent & Trademark Office
(571) 272-0191 | jesse.nelman@uspto.gov
All informal e-mail communications relevant to this application will be placed in the official application record.