NOTE TO THE FILE
SERIAL NUMBER: 88462471
DATE: 07/23/2019
NAME: ekon
NOTE:
From: Kon, Elissa Garber
Sent: Friday, July 19, 2019 4:05 PM
To: Horowitz, Robert B. G. <rhorowitz@bakerlaw.com>; BH IP Docket <bhipdocket@bakerlaw.com>; Borrero, Sandy <sborrero@bakerlaw.com>; Cupito, Jo-Ann <jcupito@bakerlaw.com>
Subject: Re US Trademark Application #88462471 for SONY PICTURES STUDIO, Docket 041279.3218
Dear Mr. Horowitz
I am checking in to see whether you have heard back from your client regarding the application below. Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Horowitz, Robert B. G. [mailto:rhorowitz@bakerlaw.com]
Sent: Tuesday, July 16, 2019 1:25 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>; BH IP Docket <bhipdocket@bakerlaw.com>; Borrero, Sandy <sborrero@bakerlaw.com>; Cupito, Jo-Ann <jcupito@bakerlaw.com>
Subject: RE: Re US Trademark Application #88462471 for SONY PICTURES STUDIO, Docket 041279.3218
Dear Ms. Kon:
Thank you for your E-mail.
I have to reach out to Sony about your requests, and will revert.
Cordially,
Red Horowitz
Robert B.G. Horowitz
Partner
45 Rockefeller Plaza
New York, NY 10111-0100
T +1.212.589.4240
M +1.917.288.1793
rhorowitz@bakerlaw.com
bakerlaw.com
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Monday, July 15, 2019 8:17 PM
To: BH IP Docket <bhipdocket@bakerlaw.com>; Horowitz, Robert B. G. <rhorowitz@bakerlaw.com>; Borrero, Sandy <sborrero@bakerlaw.com>; Cupito, Jo-Ann <jcupito@bakerlaw.com>
Subject: Re US Trademark Application #88462471 for SONY PICTURES STUDIO, Docket 041279.3219
Dear Mr. Horowitz
I am the trademark examining attorney to whom this application has been assigned. There are minor issues that we can resolve by examiner’s amendment based on your reply to this email or a phone call.
First, the applicant must disclaim the descriptive wording “PICTURES STUDIO.” The services include sightseeing tours of motion “picture” and television production “facilities,” which is broad enough to include studios. The disclaimer statement should read as:
n No claim is made to the exclusive right to use “PICTURES STUDIO” apart from the mark as shown.
Second, the applicant must amend the description of goods and services as noted below. Suggested changes and additions are in bold, and items the applicant must clarify are in italics.
Class 9: (add “downloadable” or “recorded” for software in class 9) Computer programs for sharing a device's displayed contents with others and simultaneously communicating with them via video chat; (add “downloadable” or “recorded” for software in class 9) smartphone application software for sharing a smartphone's displayed contents with others and simultaneously communicating with them via video chat
Class 14: no changes required - Key rings of precious metals; personal ornaments, namely, earrings, tie clips, tie pins, necklaces, bracelets, pendants, brooches, rings, lockets; cuff links; clocks; watches
Class 16: no changes required - Paper products, namely, stationery, binders, calendars, stickers, bookmarks, greeting cards, posters, postcards, writing utensils, pens, pencils, blank journals, notebooks, photographs, paper folders, paper gift bags; books in the field of motion picture films, television shows and entertainment, comic books, trading cards
Class 18: Bags, namely, all-purpose carrying bags, athletic bags, shoulder bags, traveling bags; pouches, namely, pouches of textile, pouches of leather, waist pouches; pouches
and the like, namely, vinyl and canvas pouches, pouches of leather, pouches of textile; card cases, namely, credit card cases, business card cases, name card cases; key cases; purses; wallets; umbrellas; clothing for pets; unfitted vanity cases
Class 21: Bowls; lunchboxes; mugs; drinking bottles for sports
Class 25: no changes required - Clothing, namely, shirts, pants, coats, and dresses; shawls; scarves; neckties; bandanas; mufflers; ear muffs; headwear, namely hats, caps and berets; belts for clothing; footwear
Class 28: no changes required - Christmas tree decorations; Christmas tree ornaments; golf ball markers; toys, games, and playthings, namely, dolls, toy figures, plush toys, rubber character toys, bendable toys, jigsaw and manipulative puzzles, board games, card games, playing cards, puzzles
Class 35: no changes required - Retail store and online retail store services featuring mousepads, decorative magnets, eyeglasses, sunglasses, cases for smartphones, paper products, stationery, bags, pouches, key cases, purses, wallets, umbrellas, card cases, bowls, lunchboxes, mugs, drinking bottles, clothing, shawls, scarves, neckties, bandanas, mufflers, ear muffs, headwear, footwear, Christmas tree decorations, golf ball markers, toys
Class 41: no changes required -Education and entertainment services, namely, providing narrated sightseeing tours of motion picture and television production facilities including exhibitions and demonstrations; amusement park and theme park services; entertainment services in the nature of production and distribution of motion picture films
Please note that if the computer programs and smartphone application software listed in Class 9 is web-based but nondownloadable, then the applicant may choose to pay a fee and add Class 42, as follows:
Class 42: providing temporary use on online, nondownloadable computer programs for sharing a device's displayed contents with others and simultaneously communicating with them via video chat; Software as a service services SAAS featuring smartphone application software for sharing a smartphone's displayed contents with others and simultaneously communicating with them via video chat
Please let me know how you want to proceed or if you have questions. If you are able to agree to some but not all of the above changes, then please let me know and I will enter what I can for you, and issue a priority Office action on the rest. Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.