Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  February 19, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

 

SEARCH OF USPTO DATABASE OF MARKS

 

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.

 

 

SUMMARY OF ISSUES:

• Identification of Goods and/or Services Requires Amendment
• Explanation of Mark’s Significance Required

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRES AMENDMENT

 

The wording indicated below in the identification of goods and/or services is indefinite and must be clarified because it does not make clear the nature of the goods and/or services with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must indicate the subject matter and/or field of use as required below for clarification.

 

Applicant may substitute the following wording, if accurate (suggestions in bold):

 

International Class 9: Downloadable motion pictures about {indicate subject matter or field of pictures, e.g., comedy}; motion pictures {specify e.g. film} for theatrical distribution about {indicate subject matter or field of pictures, e.g., comedy}; pre-recorded audio visual digital content in the nature of prerecorded digital audio tape featuring {indicate subject matter, e.g., music}; pre-recorded digital media, namely, DVDs and optical media being discs featuring motion picture films; digital downloadable multimedia files containing video for delivery to mobile telephone and personal digital devices relating to {indicate subject matter, e.g., music}; pre-recorded CD's, audio tapes, videotapes, optical discs, and digital downloadable audio files and webisodes for delivery to mobile telephone and personal digital devices featuring {indicate subject matter, e.g., science fiction music}; downloadable electronic publications in the nature of {specify types of publications e.g., e-books} in the field of fiction, non-fiction, comics and screenplays via computer and communications networks; downloadable streaming and wireless entertainment content in the nature of audiovisual works being DVDs, motion pictures, multimedia file containing video relating to movie trailers, television programming shows, music and electronic games via the Internet and wireless devices all featuring {indicate subject matter or field e.g., comedy}

 

International Class 41: Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows and multimedia entertainment content; provision of non-downloadable entertainment media content, namely, audio-visual recordings, photographs, films and movies, and television programs featuring {indicate subject matter, e.g., automobiles} via video on demand (VOD) and subscription video on demand (SVOD); electronic sell-through (EST), namely, electronic media distribution in the nature of distribution of films, and television programs, and non-downloadable pre-recorded music, and literary works in the nature of articles in the field of music presented to mobile communications devices via a global computer network and wireless networks; entertainment services, namely, provision of ongoing television programs in the field of {specify e.g. family management and relationships}; entertainment services in the form of production and distribution of animation, visual effects, and computer graphics for motion pictures and television; providing online non-downloadable audio and video content recordings in the fields of entertainment motion picture films and education seminars; production and distribution of pre-recorded digital versatile discs (DVDs) and pre-recorded audio discs and non-disc digital storage media being optical magnetic media featuring {indicate subject matter}; movie theatre presentations, namely, planning arrangement of showing movies; provision of cinema or and theatre facilities; motion picture film and television studio services; recording, modifying or editing services for film, sound and video, namely, {specify services, e.g., video recording services, video and film editing and editing of sounds and images}; preparing subtitles for movies; providing online interviews featuring celebrities and athletes in the field of movies and sports for entertainment purposes; providing ratings for television, movie, music, video and video game content; planning arrangement of showing movies, shows, plays or musical performances; rental of motion pictures and of sound recordings; rental of stage and movie equipment, namely, camera equipment, lighting equipment and grip equipment; entertainment ticket agency services; provision of information relating to distribution of television shows, motion picture film and radio shows; motion picture song production; rental of {specify e.g., cinema projection} apparatus for transmitting, receiving, modifying, editing or reproducing cinematographic films, sound or video; rental of motion picture and television scenery sets and equipment being {specify equipment, e.g., camera equipment and lighting equipment}; providing a website featuring information, reviews and recommendations in the fields of entertainment films, motion pictures, music and television over computer networks and global communication networks; providing online computer games; provision of non-downloadable motion picture films, prerecorded music, movies and videos, all provided via a global computer network in the field of {specify field e.g., automobiles}; providing online non-downloadable comic books and graphic novels; provision of blogs and non-downloadable publications in the field of entertainment being comic books, screenplays, books, short stories featuring {specify field or subject matter, e.g., automobiles} all provided via a website; consultancy in the field of entertainment and the entertainment industry, namely, {specify e.g., consulting regarding musical selections and arrangements for sound recording and live performances}; providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of entertainment; rental of motion pictures

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or 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.

 

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must provide the following information:

 

(1)  Explain whether the wording “RAKUTEN” in the mark has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Submit an English translation of all foreign wording in a mark.  If the wording does not have meaning in a foreign language, applicant should so specify.   

 

The format for an English translation:  “The English translation of “RAKUTEN” is “{specify}”. 

 

The format for when there is no English translation:  “The wording “RAKUTEN” has no meaning in a foreign language. 

 

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.    

 

 

/Krystina Osgood/

Examining Attorney

Law Office 121

U.S. Patent and Trademark Office

(571) 272-8403

Krystina.Osgood@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 19, 2020 for

U.S. Trademark Application Serial No. 88690494

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Krystina Osgood/

Examining Attorney

Law Office 121

U.S. Patent and Trademark Office

(571) 272-8403

Krystina.Osgood@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 19, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”