To: | Rakuten, Inc. (DCPTOTrademarkMail@hoganlovells.com) |
Subject: | U.S. Trademark Application Serial No. 88690494 - RAKUTEN - 1Y0049.tbd |
Sent: | July 07, 2020 12:19:46 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88690494
Mark: RAKUTEN
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Correspondence Address:
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Applicant: Rakuten, Inc.
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Reference/Docket No. 1Y0049.tbd
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: July 07, 2020
This Office action is in response to applicant’s communication filed on June 10, 2020.
In a previous Office action, applicant was required to respond to an Identification of Goods Requirement and an Explanation of Mark’s Significance Requirement. Applicant responded by providing amendment to the identification of goods and by providing information regarding the applied-for mark.
Based on applicant’s response, the following requirement has been satisfied:
Based on further review of the application applicant must address the following:
IDENTIFICATION OF SERVICES REQUIRES AMENDMENT
Several entries in the identification of services remain indefinite and must be clarified because it does not make clear the nature of the services with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Please see the below suggestions for a definite identification.
Applicant may substitute the following wording, if accurate (suggestions in bold):
International Class 9: Downloadable motion pictures about comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; motion pictures films for theatrical distribution about comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded audio visual digital content in the nature of pre-recorded digital media, namely, digital audio and video tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded digital media, namely, digital audio and video tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards featuring motion picture films in the field of comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; digital downloadable multimedia files containing video for delivery to mobile telephone and personal digital devices relating to comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; 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 comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; downloadable electronic publications in the nature of e-books, journals, magazines, reviews, newsletters, news articles, articles and short stories 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 downloadable video and audio recordings being tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards, 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 comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports
International Class 39: Distribution services, namely, delivery of pre-recorded digital versatile discs (DVDs) and pre-recorded audio discs and digital storage media being optical magnetic discs, tapes, cassettes, flash drives, flash memory cards, USB flash drives and USB cards featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports
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 online non-downloadable entertainment media content, namely, audio-visual recordings, photographs, films and movies, and
television programs featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events,
documentaries, animations, children's entertainment, crime, history, biography and sports 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 providing non-downloadable pre-recorded music, and literary works in the
nature of online non-downloadable articles in the field of music, film, filmmaking, and entertainment 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 comedy, drama, musical performances, action, adventure, suspense, horror, westerns,
science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; entertainment services in
the form of production and distribution of animation, visual effects, and computer-generated graphics for production of motion pictures and television;
providing online non-downloadable audio and video recordings in the fields of entertainment and educational motion picture films; production of sound recordings for use on and
distribution of pre-recorded digital versatile discs (DVDs) and pre-recorded audio discs and non-disc digital storage media being optical magnetic media, optical data carriers, magnetic data
carriers, tapes, cassettes, flash drives, flash memory cards, USB flash drives and USB cards featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science
fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; movie theatre presentations, namely,
planning arrangement of showing movies; provision of cinema and theatre facilities; motion picture film and television studio services; recording, modifying or editing services for film, sound and
video, namely, video recording and film production services, video and film editing, editing of sounds and images and recording 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 audiovisual equipment for transmitting, receiving, modifying, editing or reproducing cinematographic films, sound or video; rental of
motion picture and television scenery sets and portable stages; providing online non-downloadable entertainment 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 pictures films, prerecorded music,
movies and videos, all provided via a global computer network in the field of comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective
stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; providing online non-downloadable comic books and graphic
novels; provision of blogs and online non-downloadable publications in the field of entertainment being, comic books, screenplays, books, short stories, journals, magazines,
reviews, newsletters, news articles and articles featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war
subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports all provided via a website; consultancy in the field of entertainment and the
entertainment industry, namely, consulting regarding musical selections and arrangements for sound recording and live performances, film and video production consulting services, and consulting
services in the field of cinematography; providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of entertainment
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.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(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 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
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