| To: | Trinity Christian Center of Santa Ana, I ETC. (usptomail@whitelawfirm.com) |
| Subject: | U.S. Trademark Application Serial No. 88607280 - YIPPEE - N/A |
| Sent: | November 26, 2019 05:25:57 PM |
| Sent As: | ecom108@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88607280
Mark: YIPPEE
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Correspondence Address: 3838 TAMIAMI TRAIL NORTH, SUITE 310
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Applicant: Trinity Christian Center of Santa Ana, I ETC.
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Reference/Docket No. N/A
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 26, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. 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).
PLEASE NOTE: If applicant does not add a class of goods or services to the application, applicant is encouraged to e-mail the trademark examining attorney to resolve the issues raised below at Bill.Dawe@uspto.gov. Upon receipt of the e-mail accepting the amendments set forth below, the examining attorney will prepare and examiner’s amendment, enter the amendments into the databases and approve the application for publication.
INFORMALITIES
Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
IDENTIFICATION OF GOODS
Class 16
The wording “Posters; brochures, and a series of non-fiction books in the field of religion; maps; stationery; greeting cards; and calendars” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For grammatical purposes, the identification of goods needs to drop a comma which appears behind the term brochures. Applicant must amend the identification to specify the common commercial or generic name of the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Applicant may substitute the following wording, if accurate:
Class 16 - Posters; brochures (please drop the comma here) and a series of non-fiction books all in the field of religion; maps; stationery; greeting cards; and calendars
Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.
Class 25
The wording “Clothing, namely, shirts, T-shirts, blouses, headwear, sweatshirts, pants, backpacks” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For grammatical purposes, the identification of goods needs the conjunction “and”. Moreover, backpacks are Class 18 goods, not Class 25 goods. Applicant must amend the identification to specify the common commercial or generic name of the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Applicant may substitute the following wording, if accurate:
Class 25 - Clothing, namely, shirts, T-shirts, blouses, headwear, sweatshirts and pants,
Class 18 - backpacks
Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.
Class 28
The wording “Infant toys; toys for children namely, action figures, games, playthings, sporting articles, decorations, amusements, costumes, bounce houses, educational toys; computer, electronic and video game equipment, namely, handheld units for playing electronic and video games” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Without further specification, these goods cannot be properly classified as stated. Applicant must amend the identification to specify the common commercial or generic name of the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Applicant may substitute the following wording, if accurate:
Class 28 - Infant toys; toys for children namely, toy action figures, _____________ [specify the type of games, e.g. board games] games, playthings, namely, _____________ [specify these “playthings” by their common commercial names, e.g. Teddy bears], sporting articles, namely, _____________ [specify these “sporting articles” by their common commercial names, e.g. baseball bats, baseball gloves, basketballs, etc.], __________ [specify the type of “decorations” by their common commercial names; e.g. Christmas tree decorations; please note that not all decorations are classified in Class 28, e.g. edible cake decorations are classified in Class 30] decorations, amusements, namely, _____________ [specify these “amusements” by their common commercial names, e.g. amusement park rides, etc.]; __________ [specify the type of “costumes” by their common commercial names; e.g. doll costumes, etc.; please note that not all costumes are classified in Class 28, e.g. Halloween costumes are classified in Class 25] costumes, amusement devices, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, educational toys, namely, ___________ [specify these goods by their common commercial names, e.g. educational toys in the nature of an illustrated wall map; Children’s educational toys for developing cognitive skills]; computer, electronic and video game equipment, namely, handheld units for playing electronic and video games other than those adapted for use with an external display screen or monitor
Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
RECITATION OF SERVICES
Class 38
Applicant may substitute the following wording, if accurate:
Class 38 – Video-on-demand transmissions; video-on-demand transmission services; video-on-demand transmission via the internet; subscription television broadcasting;
subscription video-on-demand transmissions television broadcasting of religious, faith-based and motivational programming; cable television broadcasting of religious, faith-based and motivational
programming; television broadcasting services of religious, faith-based and motivational programming; digital television broadcasting of religious, faith-based and
motivational programming; audio broadcasting of religious, faith-based and motivational programming; broadcasting religious, faith-based and motivational programs via a global computer network; video
broadcasting of religious, faith-based and motivational programming; streaming of religious, faith-based and motivational video material on the internet; radio broadcasting of religious, faith-based
and motivational information and other religious, faith-based and motivational programs; radio program broadcasting of religious, faith-based and motivational
programming; and (because of the presence of the semi-colon “;”, the conjunction “AND” is not needed and therefore should be deleted) streaming of
religious, faith-based and motivational audio material on the internet; providing information in the field of inspirational audio and video broadcasting; streaming of audio and video material on the
Internet; streaming of audio and video material on the Internet featuring content of general interest
Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.
Class 41
The wording “Entertainment, namely, television news shows; production of cable television programs featuring religion; production of closed caption television programs featuring faith-based, motivational and religious topics; production of radio and television programs featuring faith-based, motivational and religious topics; television program production featuring faith-based, motivational and religious topics; religious, faith-based and motivational television program syndication; television show production featuring faith-based, motivational and religious topics; entertainment in the nature of ongoing television programs in the field of news, comedy, variety, religion, health, and children's faith-based, motivational and religious entertainment programming and religious, faith-based and motivational education; entertainment services, namely, providing a radio program in the field of news, religion, health, variety, comedy and children's religious, faith-based and motivational entertainment programming and religious, faith-based and motivational education via a global computer network; entertainment services, namely, providing ongoing television program in the field of news, religion, health, variety, comedy and children's religious, faith-based and motivational entertainment programming and religious, faith-based and motivational education via a global computer network; entertainment services in the nature of ongoing television programs in the field of children's religious, faith-based and motivational entertainment; radio entertainment services, namely, religious, faith-based and motivational radio programs featuring performances by a radio personality; entertainment, namely, production of television shows featuring faith-based, motivational and religious topics and game shows; entertainment services, namely, production and distribution of a game show; film and video production; production of film and videos featuring faith-based, motivational and religious topics; production of radio entertainment featuring faith-based, motivational and religious topics; production of videotapes featuring faith-based, motivational and religious topics; entertainment services, namely, providing a web site featuring non-downloadable musical performances in the form of videos, non-downloadable musical videos, non-downloadable related film clips, non-downloadable photographs, and other multimedia materials, namely, non-downloadable music videos, all in the field of religion; entertainment services, namely, production of online musical videos; entertainment, namely, a continuing news, comedy, variety, health, music and religious show broadcast over television, satellite, audio, and video media; entertainment, namely, continuing television shows broadcast over television, satellite, audio, and video media shows featuring religious content; production of motion picture films featuring faith-based, motivational and religious topics; providing information on the subject of news and comedy; providing information in the field of children's religious, faith-based and motivational education and religious, faith-based and motivational entertainment programming; providing entertainment information on the subject of youth and adult topics; providing entertainment information in the field of health; providing information on the subject of inspirational and religious broadcasting, current event news, comedy, variety entertainment, music and youth, adult and children specific topics, namely, information to adult family members on appropriate entertainment and leisure activities for younger family members, and news and information specifically in the field of music, motion pictures, television shows and multimedia content; providing entertainment information in the field of health, namely, information relating to health-themed entertainment” in the identification of services is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. All providing “information” is classified by the field of the information services. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01. 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.
Applicant may substitute the following wording, if accurate:
Class 41 – Entertainment, namely, television news shows; production of cable television programs featuring religion; production of closed caption television programs featuring faith-based, motivational and religious topics; production of radio and television programs featuring faith-based, motivational and religious topics; television program production featuring faith-based, motivational and religious topics; religious, faith-based and motivational television program syndication; television show production featuring faith-based, motivational and religious topics; entertainment in the nature of ongoing television programs in the field of news, comedy, variety, religion, health, and children's faith-based, motivational and religious entertainment programming and religious, faith-based and motivational education; entertainment services, namely, providing a radio program in the field of news, religion, health, variety, comedy and children's religious, faith-based and motivational entertainment programming and religious, faith-based and motivational education via a global computer network; entertainment services, namely, providing ongoing television program in the field of news, religion, health, variety, comedy and children's religious, faith-based and motivational entertainment programming and religious, faith-based and motivational education via a global computer network; entertainment services in the nature of ongoing television programs in the field of children's religious, faith-based and motivational entertainment; radio entertainment services, namely, religious, faith-based and motivational radio programs featuring performances by a radio personality; entertainment, namely, production of television shows featuring faith-based, motivational and religious topics and game shows; entertainment services, namely, production and distribution of a game show; film and video production; production of film and videos featuring faith-based, motivational and religious topics; production of radio entertainment featuring faith-based, motivational and religious topics; production of videotapes featuring faith-based, motivational and religious topics; entertainment services, namely, providing a web site featuring non-downloadable musical performances in the form of videos, non-downloadable musical videos, non-downloadable related film clips, non-downloadable photographs, and other multimedia materials, namely, non-downloadable music videos, all in the field of religion; entertainment services, namely, production of online musical videos; entertainment, namely, a continuing news, comedy, variety, health, music and religious show broadcast over television, satellite, audio, and video media; entertainment, namely, continuing television shows broadcast over television, satellite, audio, and video media shows featuring religious content; production of motion picture films featuring faith-based, motivational and religious topics; providing information on the subject of news and comedy; providing information in the field of children's religious, faith-based and motivational education and religious, faith-based and motivational entertainment programming; providing entertainment information on the subject of youth and adult entertainment topics; providing information on the subject of inspirational and religious program broadcasting, current event news, comedy, variety entertainment, music and youth, adult and children specific topics, namely, information to adult family members on appropriate entertainment and leisure activities for younger family members, and news and information specifically in the field of music, motion pictures, television shows and multimedia content; providing entertainment information in the field of health, namely, information relating to health-themed entertainment, namely, ____________ [specify this entertainment by its common commercial names]
Class 44 – providing information in the field of health;
Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.
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.
REQUIREMENTS OF MULTI-CLASS APPLICATION
(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 7 classes; however, applicant submitted a fee(s) sufficient for only 5 classes. 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.
GENERAL INQUIRY
Applicant must explain whether “YIPPEE” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §814.
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions: With reference to the identified goods and services, what is the significance of the term YIPPEE.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
CLOSING
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
/William H. Dawe, III/
Examining Attorney
Law Office 108
(571) 272-9337 voice
(571) 273-9337 fax
Bill.Dawe@USPTO.GOV (not for fomal responses)
RESPONSE GUIDANCE