Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88827390

DATE:                                06/04/2020

NAME:                               kmoninghoff

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                           X   Sent email to
        email                               Attorney

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER: upon further review of ID Manual, accepted some wording in ID

From: Moninghoff, Kim
Sent: Thursday, May 28, 2020 2:27 PM
To: anna.kim@nbcuni.com
Cc: docketing@nbcuni.com; chris.perkins@nbcuni.com
Subject: Trademark Application Nos. 88827375 88827390 SYFY WIRE - please respond by Wed, 6/3

 

Ms. Kim,

 

I’ve been assigned to review these two trademark applications.  Before I can approve them for publication, there are some identification/classification issues that must be addressed.  We may be able to resolve these by Examiner’s Amendment (EA) or at least simplify them by Examiner’s Amendment/Priority Action (EA/PA).

 

The first application in the subject line above includes “programs.”  To be registrable, these programs must be identified as continuing (or ongoing, or a series; i.e., something that communicates that this is not a single work).    This application also includes “news and information,” which is classified according to subject matter and could include services in other classes.  These services can be limited to the entertainment field, if accurate.  The following amendments would address these issues:

 

Entertainment services in the nature of providing continuing audio-visual programs featuring news and variety delivered by internet, wireless, and mobile networks; provision of news and information in the field of entertainment via the internet, mobile and wireless networks, in Class 41.

 

If you consent to these amendments, you can let me know by reply email and I will enter them by EA and approve this mark for publication.

 

The second application in the subject line includes a variety of “programming” services including “television programming.”  This wording is definite in Class 41 if it refers to scheduling of television shows.  Therefore, some of the programming services need to be amended or deleted.  Distribution is in Class 41 if it refers distributing films or television programs to movie theaters or television stations for display to the public.  Distribution of anything over the internet is a transmission service in Class 38.  Therefore, the production and distribution services need to be amended and, in some cases, reclassified.  Similar, to the above application, the programs need to be identified as continuing (or ongoing, or a series).  The “short form entertainment content” appears to be something other than a series, but can be amended to on-line, non-downloadable videos, if accurate.  The “non-downloadable videos and images . . . transmitted via the Internet and wireless communication networks,” need to be amended because “transmitted” refers to Class 38 services.  The applicant may clarify that this content is provided via the specified networks, if accurate.  The identification seems to list three different types of games, but only computer and video games that are on-line and non-downloadable are classified in Class 41.  Therefore, these games need amendments including indicating that they are merely accessible (not downloadable to) mobile devices.  The following amendments would address these issues:

 

Distribution in the nature of broadcasting film, television series, podcasts and short form entertainment content featuring reality, comedy, drama, fantasy, horror, news and variety via the internet, in Class 38.

 

Television programming services; entertainment in the nature of television programming, cable television programming, satellite television programming, and internet protocol television programming, multimedia programming, and programming via global computer and wireless communication networks; entertainment services in the nature of the production and distribution of film, and television series featuring reality, comedy, drama, fantasy, horror, news and variety; entertainment services in the nature of the production of podcasts and short form entertainment content featuring reality, comedy, drama, fantasy, horror, news and variety; entertainment in the nature of ongoing television programs and on-line, non-downloadable videos featuring short form entertainment content featuring reality, comedy, drama, fantasy, horror, news and variety; entertainment services in the nature of non-downloadable videos and images related to television series in the field of reality, comedy, drama, fantasy, horror, news and variety provided via the Internet and wireless communication networks; entertainment services, namely, providing online games, web based games, non-downloadable computer and video games, including games accessible using mobile devices; organizing and arranging exhibitions for entertainment, cultural or educational purposes; live stage performances, namely, presentation of live show performances, in Class 41.

 

If you consent to the amendments in Class 41, you can let me know by reply email and I will enter them by EA and approve this mark for publication.  If you wish to add Class 38, you can provide your consent to the amendments in both classes by reply email and I will enter them in a combined EA/PA that includes a requirement for the additional filing fee.

 

If you have any questions, please let me know.

 

If I don’t hear back from you by the end of the day Wednesday (6/3), I will send you formal Office actions for both applications.  Thank you.

 

 

Kim Teresa Moninghoff

Trademark Examining Attorney

Law Office 113

Phone:  571-272-4738

 

All informal e-mail communications relevant to this application will be placed in the official application record.