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:  June 04, 2020

 

 

 

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.

 

Search Results

 

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.  However, the applicant must address the following requirement.

 

Summary of Issues Applicant Must Address

• Requirement for Acceptable Identification and Classification of Goods and Services (and Compliance with Multiple-Class Application Requirements, if applicable)

 

Identification and Classification of Goods and Services – As to Specific Services

 

Applicant’s services are identified as:

 

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

 

This requirement is limited to the wording highlighted above in bold.

 

The wording “entertainment in the nature of internet programming, multimedia programming, and programming via global computer and wireless communication networks” in the identification of services is indefinite and must be clarified because in the context of entertainment, programming normally refers to television and radio scheduling.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Since the identification already includes a variety of television programming services, the applicant may amend the wording “internet programming” to internet protocol television programming, if accurate, and delete the other programming services included in this requirement.

 

The wording “entertainment services in the nature of the distribution of podcasts and short form entertainment content featuring reality, comedy, drama, fantasy, horror, news and variety” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In Class 41, the term “distribution” refers to the activity of distributing motion pictures and television programs to movie theaters and televisions stations for display to the public.  Podcasts and short form entertainment content are not distributed in this manner.  If this distribution is intended to refer to broadcasting via the internet, the applicant may amend the services accordingly and reclassify them with other broadcast services in Class 38.  The applicant may also include its “film, television series” with these internet broadcast services, if accurate.

 

The wording “entertainment in the nature of short form entertainment content featuring reality, comedy, drama, fantasy, horror, news and variety” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The applicant must specify the form of this content, such as videos.  Only on-line, non-downloadable videos are classified in Class 41, so if this content is downloadable, or provided on recorded media, this must be specified and the videos reclassified in Class 9.

 

The wording “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 transmitted via the Internet and wireless communication networks” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording includes the term “transmitted,” which is normally used in reference to telecommunications services in Class 38.  The applicant may amend this term to “provided” if accurate.  No suggestions in Class 38 for amending these services are provided.

 

The wording “entertainment services, namely, providing online games, web based games and non-downloadable games for mobile devices” in the identification of services must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The applicant must specify the types of games it intends to offer, such as computer and video games.  Only on-line, non-downloadable computer and video games are classified in Class 41.  Downloadable computer and video games are classified in Class 9.  Therefore, the applicant should amend this wording to indicate that its games have all of the specified characteristics.  Since these games are non-downloadable, the applicant should clarify that they are accessible using mobile devices, if accurate.  No suggestions in Class 9 are provided.

 

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.  In particular, the applicant is referred to the attached excerpts from the Manual.

 

To summarize, applicant may adopt any or all of the following identifications of goods and services, if accurate:

 

Downloadable and recorded videos featuring short form entertainment content featuring reality, comedy, drama, fantasy, horror, news and variety, in Class 9.

 

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, internet protocol television programming; 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 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, web based, 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.

 

See TMEP §1402.01.

 

Applicant’s goods and/or 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 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).

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Multiple-Class Application Requirements

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class.  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 fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@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.  Because 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 June 04, 2020 for

U.S. Trademark Application Serial No. 88827390

 

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. 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@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 June 04, 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.”