To: | Norris, Carlos Ray (ipdocketing@squirepb.com) |
Subject: | U.S. Trademark Application Serial No. 88559653 - THE WORLD ACCORDING TO CHUCK NORRIS - 420759. |
Sent: | November 06, 2019 11:43:46 AM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88559653
Mark: THE WORLD ACCORDING TO CHUCK NORRIS
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Correspondence Address:
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Applicant: Norris, Carlos Ray
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Reference/Docket No. 420759.
Correspondence Email Address: |
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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: November 06, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES
IDENTIFICATION OF SERVICES – REQUIRED
PLEASE NOTE: 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 at http://tess2.gov.uspto.report/netahtml/tidmn.html. See TMEP §1402.04.
An application must specify, in an explicit manner, the particular services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the services specified using definite and unambiguous language.
The wording “Entertainment services, namely, live action or animated television programs, motion pictures and theatrical performances” is indefinite and must be clarified to specify the field or subject matter of the services. See TMEP §1402.01. See suggested amended wording below.
The wording “providing a website featuring live action or animated television programs, motion pictures or theatrical performances” is indefinite and must be clarified to specify the field or subject matter of the services. See suggested amended wording below.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of services. If there is wording in the applicant’s version of the identification of services which should be
removed, it will be shown with a line through it such as this: strikethrough. When making its amendments,
applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 41: Entertainment services, namely, production and distribution of live action or and animated television programs, motion pictures or
and theatrical performances in the field of _____ {indicate field or subject matter}; providing a website featuring non-downloadable videos being live action or
and animated television programs, motion pictures or and theatrical performances in the field of _____ {indicate field or subject matter};
entertainment and educational services, namely, providing a website featuring entertainment information about television celebrity Chuck Norris and commentary in the field of
entertainment from television celebrity Chuck Norris, blogs and non-downloadable publications in the nature of columns and articles on a variety of topics, including
namely, entertainment, history, health and fitness, motivation, patriotism, nutrition, sports, physical exercise, and wellness; entertainment and educational services, namely, providing an
online non-downloadable column featuring information and commentary on a variety of topics, including namely, entertainment, history, health and fitness,
motivation, patriotism, nutrition, sports, physical exercise, and wellness; entertainment services, namely, personal appearances by a movie star, author and actor
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Generally, any deleted services may not later be reinserted. See TMEP §1402.07(e).
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.
Applicant should note the following additional requirement outlined below.
DOMICILE – REQUIRED
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e. headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as an individual and specifies applicant’s domicile as a “c/o” or in “care of” another party’s address. In most cases, an address that is listed as “c/o” or in “care of” another party’s address is not acceptable as a domicile address because it does not identify the location of the place applicant resides and intends to be applicant’s principal home. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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
Megan Aurand
/Megan Aurand/
Examining Attorney
Law Office 128
(571) 272-1614
megan.aurand@uspto.gov
RESPONSE GUIDANCE