NOTE TO THE FILE
SERIAL NUMBER: 90340985
DATE: 06/09/2021
NAME: jcantor
NOTE:
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantX Issued Examiner’s Amendment and entered changes in TRADEUPS
From: Michele Robichaux <michele@odinlaw.com>
Sent: Wednesday, June 9, 2021 11:27 AM
To: Cantor, Jillian <Jillian.Cantor@USPTO.GOV>
Cc: brandon@odinlaw.com; tm@odinlaw.com
Subject: Re: TM Application Serial Nos. 90340985 and 90341002, VSHOJO, and 90341027, V
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Understood. We'll go ahead and authorize, then.
Thank you,
Michele K. Robichaux
Odin Law and Media
p. 919.813.0090 | f. 855.883.9443
Confidential. This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.
On Wed, Jun 9, 2021 at 5:25 PM Cantor, Jillian <Jillian.Cantor@uspto.gov> wrote:
Good morning:
My supervisor agreed that the proposed wording continues to be indefinite; “entertainer” is simply too broad and it must be made clear that the services are provided via the internet and in an interactive method. It is suggested that “virtual actors” will render the phrase to be definite. Thus, the following is suggested:
Entertainment services in the nature of interactive live visual and audio performances by virtual entertainers in the nature of virtual actors via the internet
Upon your authorization, I will be happy to issue an Examiner’s Amendment to expedite processing of this application.
Kind Regards,
Jillian R. Cantor, Esq.
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 117
(571) 272-6564
From: Michele Robichaux <michele@odinlaw.com>
Sent: Monday, June 7, 2021 10:16 AM
To: Cantor, Jillian <Jillian.Cantor@USPTO.GOV>
Cc: brandon@odinlaw.com; tm@odinlaw.com
Subject: Re: TM Application Serial Nos. 90340985 and 90341002, VSHOJO, and 90341027, V
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Great. Thank you!
Michele K. Robichaux
Odin Law and Media
p. 919.813.0090 | f. 855.883.9443
Confidential. This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.
On Mon, Jun 7, 2021 at 4:11 PM Cantor, Jillian <Jillian.Cantor@uspto.gov> wrote:
Good morning:
I forwarded it to my supervisor to determine whether it is acceptable. She should provide a response sometime this morning.
Kind Regards,
Jillian R. Cantor, Esq.
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 117
(571) 272-6564
From: Michele Robichaux <michele@odinlaw.com>
Sent: Monday, June 7, 2021 10:10 AM
To: Cantor, Jillian <Jillian.Cantor@USPTO.GOV>
Cc: brandon@odinlaw.com; tm@odinlaw.com
Subject: Re: TM Application Serial Nos. 90340985 and 90341002, VSHOJO, and 90341027, V
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Hi Jillian,
Following up on our correspondence from last week, is it still your opinion that "actors" should be used in the services description or would you be willing to consider "virtual entertainers" instead?
Thank you,
Michele K. Robichaux
Odin Law and Media
p. 919.813.0090 | f. 855.883.9443
Confidential. This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.
On Fri, Jun 4, 2021 at 9:55 PM Michele Robichaux <michele@odinlaw.com> wrote:
Actor is a bit of a misnomer here. The persons concerned are "VTubers" (http://en.wikipedia.org/wiki/Virtual_YouTuber) entertainers who have created online personas in the same way that regular social media influencers have. The only difference is that rather than seeing their actual physical features, their audience sees an avatar. They aren't acting per se, in the same way that You Tubers or other social media influencers aren't acting.
Michele K. Robichaux
Odin Law and Media
p. 919.813.0090 | f. 855.883.9443
Confidential. This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.
On Fri, Jun 4, 2021 at 9:43 PM Cantor, Jillian <Jillian.Cantor@uspto.gov> wrote:
Good afternoon:
As to Class 35, yes, we can delete the bold wording and leave the rest.
As to Class 41, we need to specify the type of “talent” being referred to. They are actors, if I understand the application correctly (live persons acting out parts or fantasies to the consumer), so we can clarify the wording by stating
Entertainment services in the nature of live visual and audio performances by virtual entertainers in the nature of actors
Please advise whether applicant is amenable to this amendment.
Kind Regards,
Jillian R. Cantor, Esq.
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 117
(571) 272-6564
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Michele Robichaux <michele@odinlaw.com>
Sent: Friday, June 4, 2021 3:39 PM
To: Cantor, Jillian <Jillian.Cantor@USPTO.GOV>
Cc: brandon@odinlaw.com; tm@odinlaw.com
Subject: Re: TM Application Serial Nos. 90340985 and 90341002, VSHOJO, and 90341027, V
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Hi Jillian,
Please see my responses below in red and let us know if they are acceptable to you.
Thank you,
Michele K. Robichaux
Odin Law and Media
p. 919.813.0090 | f. 855.883.9443
Confidential. This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message.
On Fri, Jun 4, 2021 at 9:28 PM Cantor, Jillian <Jillian.Cantor@uspto.gov> wrote:
Please advise. My supervisor has provided an extension for a response until Monday.
Kind Regards,
Jillian R. Cantor, Esq.
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 117
(571) 272-6564
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Cantor, Jillian
Sent: Thursday, June 3, 2021 1:17 PM
To: 'brandon@odinlaw.com' <brandon@odinlaw.com>; 'michele@odinlaw.com' <michele@odinlaw.com>
Cc: 'tm@odinlaw.com' <tm@odinlaw.com>
Subject: TM Application Serial Nos. 90340985 and 90341002, VSHOJO, and 90341027, V
Good afternoon:
I am the examining attorney in the above referenced trademark applications. The specimen issue was obviated in the applications, and the Section 1(b) filing basis was deleted for Serial No. 90340985. There are a few issues that require further resolution. The issues are as follows:
(1) Serial No. 90340985 (standard characters mark)
a. Identification of Services: The identification of services in Class 41 contains language that is misclassified. Streaming services are properly classified in Class 38, not Class 41. Further, the wording “Entertainment services in the nature of live visual and audio performances by virtual talent” does not properly and clearly specify who is providing the services. The following is suggested:
Class 41: Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text in the field of virtual adult entertainment via a global computer network; Entertainment services, namely, providing non-downloadable computer animation videos in the nature of anime, videos, movies, an ongoing television series, audio recordings,
and other multimedia entertainment content in the nature of interactive streaming audiovisual worksfeaturing virtual talent adult entertainment via the Internet and other communications networks; Providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information in the field of virtual reality videos and computer generated animation in the nature of anime, videos, movies, television series and other multimedia materials all featuring adult entertainment, and also featuring user-added comments, reviews, recommendations; Entertainment services in the nature of live visual and audio performances by virtual talent, namely, actors - Would it be acceptable to change the suggested term "actors" here to "virtual entertainers"?
(2) Serial No. 90341002 (design mark)
a. Identification of Services: The identifications in both Class 35 and 41 requires further clarification. With regard to Class 35, an identification cannot have open-ended wording such as “e.g.”; that wording was included in the Office Action to indicate that you may enter more information as needed to further clarify the service. With regard to Class 41, the same issues exist as the above application. The following is suggested:
Class 35: Talent agency services; Employment services in the nature of talent casting in the fields of commercials, music, films; Talent agencies for virtual talent, virtual entertainers, and virtual industry service providers; Branding services, namely, consulting, development, management of brands for others in the field of virtual entertainment; brand imagery consulting services for others in the field of virtual entertainment; brand development and evaluation services in the field of virtual entertainment; brand consulting services, namely, brand development and social media strategy consultancy focusing on helping clients create and extend their brand strategies in the fields of virtual entertainment; Talent agency services, namely, securing endorsement and sponsorship opportunities from corporate and other third party entities for virtual entertainers - Would it be acceptable to omit the language in bold and leave the remainder of the description as is?
Class 41: Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text in the field of virtual adult entertainment via a global computer network; Entertainment services, namely, providing non-downloadable computer animation videos in the nature of anime, videos, movies, an ongoing television series, audio recordings,
and other multimedia entertainment content in the nature of interactive streaming audiovisual worksfeaturing virtual talent adult entertainment via the Internet and other communications networks; Providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information in the field of virtual reality videos and computer generated animation in the nature of anime, videos, movies, television series and other multimedia materials all featuring adult entertainment, and also featuring user-added comments, reviews, recommendations; Entertainment services in the nature of live visual and audio performances by virtual talent, namely, actors - same response as above.
(3) Serial No. 90341027, V
a. Identification of Services: The same issue exists as to Class 41 as above, and the same amendment is suggested. - same response as above.
Upon your authorization, I will be happy to issue an Examiner’s Amendment to expedite processing of these applications. Please respond to this email by June 4. Once I receive your approval of the amendments, I will issue an Examiner Amendment to reflect these changes. If I do not hear from you by June 4, I will send you a final written Office Action confirming the above mentioned issues.
I look forward to your reply.
Kind Regards,
Jillian R. Cantor
Examining Attorney
U.S. Patent & Trademark Office
Law Office 117
(571) 272-6564
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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