To: | Stokes, James (office1416@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88635061 - TIME 2 GRIND - N/A |
Sent: | January 04, 2020 02:38:49 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88635061
Mark: TIME 2 GRIND
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Correspondence Address:
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Applicant: Stokes, James
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: January 04, 2020
TEAS PLUS 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 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 applicants who do not meet these requirements must submit an additional processing fee of $125. 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 applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
INTRODUCTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The applicant must address:
Also contained herein is a prior-filed and pending application that may be the subject of a refusal under Section 2(d) of the Trademark Act based on a likelihood of confusion should that application register.
POTENTIAL SECTION 2(d) REFUSAL ADVISORY –
PRIOR-FILED AND PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Although the applicant is not required to respond to the issue of the prior-filed application, the applicant must respond to the below requirements within six months of the mailing date of this Office action to avoid abandonment.
NOTE: It is likely that this prior-filed and pending application will not pose a bar to registration of the applicant’s mark under Section 2(d) of the Trademark Act when the applicant effectuates the below identification amendments. As presently worded, however, and for example, the clause “Entertainment, namely, a continuing Time2Grind show broadcast over Webcasting, Internet, Radio” may identify a sports show. Thus, the Office will revisit this issue when the applicant amends the identification.
MARK DESCRIPTION AMENDMENT REQUIRED
A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.
The following description is suggested, if accurate:
The mark consists of “TIME 2 GRIND” in crimson red and clock hands in black.
RECITATION OF SERVICES AMENDMENT REQUIRED
The wording “Entertainment in the nature of an ongoing special variety, news, music or comedy show featuring Entertainers and Musicians broadcast over television, satellite, audio, and video media” and “Entertainment services, namely, an ongoing series featuring Musicians and Entertainers provided through Webcasting, Internet, Radio” in the recitation of services is indefinite and must be clarified to indicate the field or subject matter of the show and series, not just who appears. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Entertainment services, namely, the provision of continuing Entertainment News featuring Musicians and Entertainers delivered by James Stokes” in the recitation of services is indefinite and must be clarified because, as opposed to “Entertainment News,” the applicant must indicate the form of entertainment. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Also, the applicant must indicate the field or subject matter of the continuing program, not just who appears. Moreover, as opposed to “James Stokes,” the applicant must indicate the form of broadcast medium.
Therefore, the applicant may adopt the following recitation of services, if accurate:
Class 41: Audio production services, namely, creating and producing ambient soundscapes, and sound stories for museums, galleries, attractions, podcasts, broadcasts, websites and games; Education services, namely, providing hands-on opportunities for children in the field of intuitive engineering through live, broadcast, and on-line classes, seminars, workshops, training and curriculum development for children, parents and educators; Entertainment in the nature of an ongoing special variety, news, music or comedy show featuring entertainers and musicians in the field of {indicate field or subject matter of the show, e.g., music} broadcast over television, satellite, audio, and video media; Entertainment services, namely, an ongoing series featuring musicians and entertainers in the field of {indicate field or subject matter of the show, e.g., music} provided through webcasting, internet, and radio; Entertainment services, namely, the provision of continuing {indicate form of the entertainment, e.g., shows} featuring entertainment news about musicians and entertainers delivered by {indicate form of broadcast medium, e.g., the Internet}; Entertainment, namely, a continuing {indicate type, e.g., comedy} show broadcast over webcasting, internet, and radio; News syndication for the broadcasting industry
Applicant’s services 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 services or add 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 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
SUBSTITUTE SPECIMEN REQUIRED
Registration is refused because the specimen is merely a photocopy of the drawing, and thus fails to show the applied-for mark in use in commerce with the services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
DOMESTIC PRO SE APPLICANT ADVISORY
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each requirement in this Office action. For the requirements, 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.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Kevin G. Crennan/
Trademark Examining Attorney
Law Office 113
(571) 272-7949
kevin.crennan@uspto.gov
RESPONSE GUIDANCE