To: | Sony Corporation (bhipdocket@bakerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88462471 - SONY PICTURES STUDIO - 041279.3218 |
Sent: | July 23, 2019 10:52:47 AM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88462471
Mark: SONY PICTURES STUDIO
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Correspondence Address: |
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Applicant: Sony Corporation
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Reference/Docket No. 041279.3218
Correspondence Email Address: |
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PRIORITY ACTION
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 23, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On July 23, 2019, the examining attorney and Robert Horowitz discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Summary of Refusals and/or Requirements
n Disclaimer statement required
n Amend certain items in the description of goods/services
n Comply with classification requirements
DISCLAIMER
In this case, applicant must disclaim the wording “PICTURES STUDIO” 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 goods and/or 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).
PICTURE is defined as “a movie,” and “STUDIO” is defined as “a room, building or group of buildings where movies, television shows or radio programs are produced; a company that produces films.” See attached definitions from www.ahdictionary.com. The description of services includes sightseeing tours of “motion picture” production facilities, as well as production and distribution of “motion picture films.” Therefore, this wording immediately tells consumers that the services feature tours, demonstrations, exhibitions and production associated with a movie or picture studio where films are produced. Moreover, the identification of goods and retail stores in Class 35 are broad enough to encompass promotional items, and the sale of same, that promote the film studio and its works. The applicant also appears to own several registrations wherein the terms PICTURES and STUDIO were disclaimed for related goods and services. Thus, the wording merely describes a feature or subject matter of the applicant’s goods and/or services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PICTURES STUDIO” 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.
AMEND DESCRIPTION OF GOODS AND SERVICES
The wording referenced in the identification of goods and services is indefinite and must be clarified because its nature is not clear, and the items could require reclassification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. TMEP §1402.03(d). However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
For example, the following are acceptable identifications for software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” Finally, the following are acceptable identifications for non-downloadable game software in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
Applicant may substitute the following wording, if accurate. Suggested changes and additions are noted in bold. Items the applicant must clarify are noted in italics. Items the applicant must delete, or clarify, are noted with lines through them.
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 (delete “and the like”
or replace that wording with the common name for the goods), 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
Class 42: providing temporary use of 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
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.
CLASSIFICATION
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least ten classes; however, applicant submitted a fee(s) sufficient for only nine class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
FEES
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@uspto.gov
RESPONSE GUIDANCE