NOTE TO THE FILE
Sent to TICRS as Serial Number: 88472696SERIAL NUMBER: 88472715
DATE: 09/10/2019
NAME: oadebayo
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 8847271588472715
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:X OTHER: Email Communication
From: Muraff, James P. <jmuraff@nge.com>
Sent: Tuesday, September 10, 2019 2:28 PM
To: Adebayo, Omolayo <Omolayo.Adebayo@USPTO.GOV>
Cc: Arden, Marianne <marden@nge.com>
Subject: RE: Follow Up: U.S. Trademark Application Serial Nos. 88472696, 88472715, 88472728
Dear Trademark Examining Attorney Adebayo,
While Redbox does not necessarily agree with your “out of scope” statement below, Redbox does agree to your suggested amendments below.
Redbox also agrees to your below suggested disclaimers.
I am an attorney of record in the above-identified applications, and am an active member in good standing of the bar of the highest court of the State of Illinois (Bar No. 6225693, Admitted in 1994).
Please contact me with any questions.
Best regards,
James P. Muraff
Attorney at Law
Neal, Gerber & Eisenberg LLP
p: 312.269.8034 | m: 312.371.6265 | f: 312.750.6556 | e: jmuraff@nge.com
Confidentiality Notice: This communication is confidential and may contain privileged information. If you have received it in error, please notify the sender by reply e-mail and immediately delete it and any attachments without copying or further transmitting the same.
From: Adebayo, Omolayo <Omolayo.Adebayo@USPTO.GOV>
Sent: Tuesday, September 10, 2019 12:39 PM
To: Muraff, James P. <jmuraff@nge.com>
Subject: Follow Up: U.S. Trademark Application Serial Nos. 88472696, 88472715, 88472728
Good afternoon Mr. Muraff,
I hope this email finds you well. I forgot to mention one additional requirement. If you agree to the amendments below, I will also need the following information per the US Counsel Bar Information requirement:
We require your bar number, state of admittance, and year of admittance, and you must agree to the following statement: “The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
I can enter the bar information and the amendments via Examiner’s Amendment.
Best,
Omolayo Adebayo
Trademark Examining Attorney
Law Office 121
Phone: (571) 272-4711
E-mail: omolayo.adebayo@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: Adebayo, Omolayo
Sent: Monday, September 9, 2019 5:30 PM
To: Muraff, James P. <jmuraff@nge.com>
Cc: Arden, Marianne <marden@nge.com>
Subject: RE: U.S. Trademark Application Serial Nos. 88472696, 88472715, 88472728
Hello Mr. Muraff,
Thank you for the amendments and timely reply. As discussed on the phone 2 entries remain unclear in International Class 41. The word “performance” is generally used to describe live performances by entertainers or dance (i.e. ballet)/musical (i.e. orchestra) performances. Moreover, the “communication,” “representation and interpretation” wording also remains unclear in the context of the services as written. Based on our discussion of what services this entry is intended to convey, I suggest deleting the unclear wording “performance, namely, presentation and communication of films, motion pictures, television and radio programs, sound and video recordings in the nature of motion pictures, television programs, documentaries, television series, learning programs, comedy shows, sports shows, news programs, political shows, special events, talk shows, weather shows, and entertainment content via and to all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices” and “performance, namely, representation and interpretation in the nature of motion pictures, television programs, documentaries, television series, learning programs, comedy shows, sports shows, news programs, political shows, special events, talk shows, weather shows, and entertainment content, including images, video games, excerpts, and recordings via and to all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices.” The entries for “production, presentation, and rental of…” encompass the services you described on the phone. Additionally, there are no definite services I can recommend based on the entries regarding performance in the nature of communication , representation, or interpretation, that wouldn’t be outside the scope of the original identified services.
Therefore, I suggest the following identification for the above referenced marks, with your amendments to all other classes being acceptable:
International Class 7: vending machines
International Class 9: Downloadable computer application software for mobile phones, portable media players, and handheld computers, namely, software for viewing and renting entertainment content in the nature of movies and television programs and for reserving entertainment content in the nature of video games, movies and television programs at a vending machine
International Class 35: Providing vending machines featuring video games, movies, and television programs; Providing automated retail vending machine kiosks featuring movies, television programs, and video games; Providing vending machine services rendered through automated kiosks featuring movies, television programs, and video games; Providing automated retail vending machine kiosk services featuring DVDs, movies, prerecorded electronic media featuring entertainment content, and video games for purchase; online retail store services featuring DVDs, movies, prerecorded electronic media featuring entertainment content, and video games for purchase; computerized online retail store services featuring pre-recorded videos; distributorship services in the field of entertainment content in the nature of DVDs, movies, video games, and digital content and pre-recorded media featuring entertainment content
International Class 38: Video-on-demand transmission services, video broadcasting, and transmission of voice, data, images, data signals, messages and information by electronic communications networks
International Class 41: Rental of video recordings by means of communications networks; providing information in the field of entertainment by means of communications networks; rental of DVDs, video discs, video games, movies and prerecorded electronic media featuring entertainment content; Production, presentation, and rental of films, motion pictures, television and radio programs, sound and video recordings, via all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices; production, presentation, and rental of images, video games, excerpts, and video and sound recordings via all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices; production of entertainment television and audio-visual shows and interactive television and audio-visual programs for distribution via television, cable, satellite, audio and video media, the Internet, electronic display devices, laser discs, computer discs, and electronic media; production of audio-visual entertainment content, television and audio-visual news shows, and television and audio-visual shows featuring information for performance and presentation in the field of motion pictures, television programs, documentaries, television series, learning programs, comedy shows, sports shows, news programs, political shows, special events, talk shows, weather shows, and entertainment content via and to all types of media, including, inter alia, television, cable and satellite television, Internet, electronic display devices, and computer and communication networks; production and recording of films, motion pictures, and shows; provision of information relating to lists of television, cable, and broadcasting programs; gaming services in the nature of providing online video games via the Internet and computer networks; none of the aforesaid being for gambling purposes
International Class 42: Computerized online search service in the field of entertainment, namely, providing a search engine for obtaining entertainment information on a global computer network
Please do not hesitate to give me a call to discuss the suggested amendments.
Best,
Omolayo
Omolayo Adebayo
Trademark Examining Attorney
Law Office 121
Phone: (571) 272-4711
E-mail: omolayo.adebayo@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: Muraff, James P. <jmuraff@nge.com>
Sent: Monday, September 9, 2019 4:02 PM
To: Adebayo, Omolayo <Omolayo.Adebayo@USPTO.GOV>
Cc: Arden, Marianne <marden@nge.com>
Subject: RE: U.S. Trademark Application Serial Nos. 88472696, 88472715, 88472728
Dear Trademark Examining Attorney Adebayo,
Per our call today, attached is a revised suggested amendment to the goods / services listing. Redbox agrees to the attached recitation, which generally follows your below suggestions, but with some changes.
Redbox also agrees to your below suggested disclaimers.
Please contact me with any questions.
Best regards,
James P. Muraff
Partner
Neal, Gerber & Eisenberg LLP
p: 312.269.8034 | m: 312.371.6265 | f: 312.750.6556 | e: jmuraff@nge.com
Confidentiality Notice: This communication is confidential and may contain privileged information. If you have received it in error, please notify the sender by reply e-mail and immediately delete it and any attachments without copying or further transmitting the same.
From: Adebayo, Omolayo <Omolayo.Adebayo@USPTO.GOV>
Sent: Monday, September 9, 2019 2:24 PM
To: Muraff, James P. <jmuraff@nge.com>
Subject: FW: U.S. Trademark Application Serial Nos. 88472696, 88472715, 88472728
Omolayo Adebayo
Trademark Examining Attorney
Law Office 121
Phone: (571) 272-4711
E-mail: omolayo.adebayo@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: Adebayo, Omolayo
Sent: Friday, September 6, 2019 5:54 PM
To: trademarks@nge.com
Subject: U.S. Trademark Application Serial Nos. 88472696, 88472715, 88472728
Good Afternoon Mr. Muraff,
I am reviewing the above referenced applications for your client, Redbox Automated Retail, LLC. In review of these applications there are a couple issues that can be corrected without the need for an office action.
For Serial Nos. 88472696, 88472715, 88472728
We require an amended identification of the goods and services identified in the application because it contains indefinite wording that must be clarified. For example, the wording “production, presentation, performance (namely representation and interpretation), and rental of images, video games, excerpts, and recordings via and to all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices” in International Class 41 must be clarified because the nature of the performance services in relation to images, video games, excerpts, and recordings is unclear. Specifically, the suggested identification would read, with suggested changes in bold:
International Class 7: vending machines
International Class 9: Downloadable computer application software for mobile phones, portable media players, and handheld computers, namely, software for viewing and renting entertainment content in the nature of movies and television programs and for reserving entertainment content in the nature of video games, movies and television programs at a vending machine
International Class 35: Providing vending machines featuring video games, movies, and television program; Providing automated retail vending machine kiosks featuring movies and video games; Providing vending machine services rendered through automated kiosks featuring movies and video games; Providing automated retail vending machine kiosk services featuring DVDs, movies, prerecorded electronic media featuring entertainment content, and video games for purchase; online retail store services featuring DVDs, movies, prerecorded electronic media featuring entertainment content, and video games for purchase; computerized online retail store services featuring pre-recorded videos; distributorship services in the field of entertainment content in the nature of DVDs, movies, video games, and digital content and pre-recorded media featuring entertainment content
International Class 38: Video-on-demand transmission services, video broadcasting, and transmission of voice, data, images, data signals, messages and information by electronic communications networks
International Class 41: Rental of video recordings by means of communications networks; providing information in the field of entertainment by means of communications networks; rental of DVDs, video discs, video games, movies and prerecorded electronic media featuring entertainment content; Production, presentation, and rental of films, motion pictures, television and radio programs, sound and video recordings, via all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices; performance, namely, representation and interpretation of films, motion pictures, television and radio programs, sound and video recordings in the nature of {specify a definite service in International Class 41} via and to all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices; production, presentation, and rental of images, video games, excerpts, and video and sound recordings via all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices; performance, namely, representation and interpretation in the nature of {specify a definite service in International Class 41} of images, video games, excerpts, and recordings via and to all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices; production of entertainment television shows and interactive television programs for distribution via television, cable, satellite, audio and video media, the Internet, electronic display devices, laser discs, computer discs, and electronic media; production of multimedia entertainment content, television news shows, and television shows featuring information for performance and presentation in the field of {specify the field of the information} via and to all types of media, including, inter alia, television, cable and satellite television, Internet, electronic display devices, and computer and communication networks; production and recording of films, motion pictures, and shows; provision of information relating to lists of television, cable, and broadcasting programs; gaming services in the nature of providing online video games via the Internet and computer networks; none of the aforesaid being for gambling purposes
International Class 42: Computerized online search service in the field of entertainment, namely, providing a search engine for obtaining entertainment information on a global computer network
Please let me know if you would approve of my amending the identification as described. Please note that if applicant wishes to add one or more additional classes to the application, an additional fee of $275.00 per added class will be necessary. In that case, I will make any approved changes and issue a Priority action requiring payment of the fee(s). Any added class will remain inactive until the fee(s) is/are paid, unless applicant specifies otherwise. Alternatively, if you or applicant has a deposit account with the USPTO, you can provide that account number and authorize the charges against that account.
For Serial No. 88472696
We require a disclaimer of the word “ORGINAL” in the mark because it is descriptive of the goods and services being the first of their kind. The suggested disclaimer would read:
“No claim is made to the exclusive right to use “ORIGINAL” apart from the mark as shown.”
Please let me know if you would approve of my adding the disclaimer as described.
For Serial No. 88472728
We require a disclaimer of the word “ENTERTAINMENT” in the mark because it is descriptive of a feature of applicant’s goods and services. The suggested disclaimer would read:
“No claim is made to the exclusive right to use “ENTERTAINMENT” apart from the mark as shown.”
Please let me know if you would approve of my adding the disclaimer as described.
In summary, we require the following approvals from you:
1) Amended Identification of Goods/Services as described above.
2) Disclaimer as described above.
Please respond no later than 12 PM EST on Tuesday, September 10, 2019.
If you have any questions, comments, or concerns please feel free to call or e-mail me using the information provided in my signature block below. Thank you.
Best,
Omolayo Adebayo
Trademark Examining Attorney
Law Office 121
Phone: (571) 272-4711
E-mail: omolayo.adebayo@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.