UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 10/15/2018

 

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 Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, the applicant must address the following requirements, detailed below:

 

• Identification and classification; and
• Disclaimer.

 

Requirement – Identification and Classification

All identifications must be precise and identify the goods and/or services with particularity using common or commercial names.  TMEP §1402.01.  Here, the identification of goods in International Class 009 is acceptable as written and not subject to this requirement.  However, the identification of services in International Classes 035 and 041 requires amendment, as detailed below.

            Current Identification

 

Applicant’s current identification of services reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):

 

International Class 035:  Subscription-based online retail store services featuring downloadable prerecorded music and video streaming, audio or video recordings in physical form, printed publications and books, clothing, headwear, footwear, merchandise, and concert tickets; exclusive access to a members-only web site, and related benefits.

 

International Class 041:  Fan club services; entertainment services, namely, live musical performances; live stage performances in the nature of concerts; live music shows; live and televised appearances by professional entertainers featuring musical, dance, and dramatic presentations; live music shows incorporating the presentation of pre-recorded music performances before a live audience; live music performances by multiple artists and related visual displays; live musical performances featuring holograms; providing non-downloadable pre-recorded music, audio recordings featuring music and audiovisual recordings featuring music videos, information in the field of music, and commentary and articles about music on-line via a global computer network; music publishing services; recording studio services; audio recording and production; record and music production; providing recreational activities facilities for others; preparing audiovisual displays and exhibitions in the field of music; operating a museum and providing guided tours of the museum; music events featuring live musical performances; providing theme park services; providing information to fans and fan sites of the late entertainer Prince Rogers Nelson by means of a global network; providing information and commentary online in the field of music; providing an internet website portal featuring links to musical artists' websites featuring musical performances, musical videos, film clips, photographs and other multimedia materials; fan club services; providing online electronic games; educational services, namely, conducting classes, seminars, conferences, and workshops in the field of music, entertainment, diversity and inclusion; non-downloadable digital audio and video files featuring musical performances; entertainment services in the nature of recording, production and post-production services in the field of music; music compositions for others; motion pictures inspired by the life, music, or lyrics of Prince Rogers Nelson; ongoing television programs inspired by the life, music, or lyrics of Prince Rogers Nelson accessible by means of television, theatre, satellite, audio, video, web-based applications, mobile phone applications, and computer networks.

 

The identification is unacceptable as presently worded because certain services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Specifically, in addition to the issues identified below, the identification of services in International Class 035 is indefinite and too broad and must be clarified because it suggests both the services of providing Internet access and providing Internet content and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03, 1402.11(a)(ii)-(iii). 

 

Providing multiple-user access to the Internet is a service provided by Internet Service Providers (“ISPs”) who supply the computer connection that enables computer users to access the Internet and all its data and content.  See TMEP §1402.11(a)(iii).  If applicant is an ISP, applicant must amend the identification to specify these services and to classify them in International Class 038.  See id.  The following format is suggested, if appropriate:  “Internet service provider (ISP),” in International Class 038.  If applicant’s services are not that of an internet service provider, then the identification should not include the word “access” because this word is suggestive of services in International Class 038, as described above.  See TMEP §1402.11(a)(ii)-(iii).

 

If applicant is providing information via the Internet, such as on a website, the subject matter of the information being provided determines classification of these services.  See TMEP §1402.01(a)(ii).  It is not clear what the subject matter of the website would entail, only that it is a member-only website.  The fact that the website is open only to members does not indicate any subject matter.  Fan club services are classified in International Class 041. 

 

If the website features technology that enables consumers to perform particular functions, then the services are technology provision services in International Class 042, and the functions of the technology must be indicated. 

 

If the website features online marketplaces, then the services would be appropriate in International Class 035. 

 

The “related benefits” must be detailed and classified according to what the benefits entail. 

 

Applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 041 for “fan club services.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “providing information to fans and fan sites of the late entertainer Prince Rogers Nelson by means of a global network” in the identification of services in International Class 041 is indefinite and must be clarified.  TMEP §§1402.01 et seq. 

Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” -- International Class 035; “providing information regarding financing and insuring an automobile” -- International Class 036; and “providing information regarding the repair and maintenance of automobiles” -- International Class 037.  If the information is provided online or via a website, this information should also be included in the identification of services, e.g., “providing health care information online” in International Class 044.

Here, applicant has indicated to whom the information is provided, indicating the consumer base for the information, but has not indicated the subject matter of the information.  Therefore, in order to enable proper classification and examination of the application, applicant must specify the subject matter of the information services. 

The wording “non-downloadable digital audio and video files featuring musical performances” in the identification of services for International Class 041 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.  In particular, this wording could encompass files recorded on computer media (thus, not being downloadable) in International Class 009. 

 

Applicant may indicate that the files are “online” files, if accurate.

 

Similarly, the wording “motion pictures inspired by the life, music, or lyrics of Prince Rogers Nelson” appears to indicate goods in International Class 009.  If applicant is providing online, non-downloadable movies, this would indicate services rather than goods. 

 

 

            Suggested Amendment

 

Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):  

 

International Class 035:  Subscription-based online retail store services featuring downloadable prerecorded music and video streaming, audio or video recordings in physical form, printed publications and books, clothing, headwear, footwear, merchandise, and concert tickets; online retail store services featuring _______ {specify what the store services feature, e.g., music, t-shits} provided through a members-only website.

 

International Class 038:  Internet Service Provider (ISP). 

 

International Class 041:  Fan club services; entertainment services, namely, live musical performances; live stage performances in the nature of concerts; live music shows; live and televised appearances by professional entertainers featuring musical, dance, and dramatic presentations; live music shows incorporating the presentation of pre-recorded music performances before a live audience; live music performances by multiple artists and related visual displays; live musical performances featuring holograms; providing non-downloadable pre-recorded music, audio recordings featuring music and audiovisual recordings featuring music videos, information in the field of music, and commentary and articles about music on-line via a global computer network; music publishing services; recording studio services; audio recording and production; record and music production; providing recreational activities facilities for others; preparing audiovisual displays and exhibitions in the field of music; operating a museum and providing guided tours of the museum; music events featuring live musical performances; providing theme park services; providing information and news in the field of current events relating to the late entertainer Prince Rogers Nelson by means of a global network; providing information and commentary online in the field of music; providing an internet website portal featuring links to musical artists' websites featuring musical performances, musical videos, film clips, photographs and other multimedia materials; providing online electronic games; educational services, namely, conducting classes, seminars, conferences, and workshops in the field of music, entertainment, diversity and inclusion; providing online non-downloadable digital audio and video files featuring musical performances; entertainment services in the nature of recording, production and post-production services in the field of music; music compositions for others; providing online non-downloadable movies inspired by the life, music, or lyrics of Prince Rogers Nelson; ongoing television programs inspired by the life, music, or lyrics of Prince Rogers Nelson accessible by means of television, theatre, satellite, audio, video, web-based applications, mobile phone applications, and computer networks; providing a members-only website featuring ______ {indicate what the website features appropriate for this class, e.g., non-downloadable music, information about music, celebrity gossip, and pop culture]; entertainment services, namely, providing a members-only website featuring photographic and prose presentations featuring _____ {specify the subject matter of the presentations, e.g., music and pop culture}; fan clubs.

 

International Class 042:  Providing a members-only website featuring technology that enables users to _______ {detail the nature of the technology provided by indicating what it enables users to do, e.g., upload and share videos, create holograms}.

 

            Limitation on Amendments

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

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.

 

            Adding Classes

 

 

The application identifies goods and/or 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(s) already paid (view the USPTO’s current fee schedule).  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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See 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.

 

Requirement - Disclaimer

 

Applicant must disclaim the wording “MUSIC CLUB” because it merely describes features of applicant’s goods and/or services and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

Specifically, the attached definitional evidence shows that a “CLUB” is a group that has a common interest.  Here, applicant’s goods and services feature music.  Additionally, applicant is providing fan club services and featuring a members-only website.  It is clear that the wording “MUSIC CLUB” in applicant’s mark indicates that the goods and services feature music and are meant for those individuals who share a common interest in music, especially the music of the late entertainer Prince Rogers Nelson. 

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). 

 

A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  Rather, it is a statement that the applicant does not claim exclusive rights to the disclaimed matter when it is used in another form outside of the mark. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “MUSIC CLUB” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number or email address below.  Applicant is encouraged to contact the examining attorney via email or telephone to make required changes to the application through an examiner’s amendment.

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) 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 or TEAS RF 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 or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  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 or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Andrea Hack/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 108

571-272-5413 (ph.)

andrea.hack@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

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

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/15/2018 FOR U.S. APPLICATION SERIAL NO. 88050292

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/15/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.