To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Fox Media LLC (FoxTrademarks@fox.com)
`
`U.S. TRADEMARK APPLICATION NO. 88391700 - FOX SPORTS 3 - 81381208
`
`6/10/2019 10:47:01 AM
`
`ECOM107@USPTO.GOV
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*88391700*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   88391700
`
`           
`
`MARK: FOX SPORTS 3
`
`CORRESPONDENT
`ADDRESS:
`  
`       TIRZAH LOWE,
`ESQ.
`           FOX
`CORPORATION
`        
`INTELLECTUAL
`PROPERTY
`DEPARTMENT
`           2121 AVENUE OF
`THE STARS, SUITE 900
`    
`    LOS ANGELES, CA
`90067
`APPLICANT: Fox
`Media LLC
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
`
`  81381208
`CORRESPONDENT E-
`
`MAIL ADDRESS:       
`
`FoxTrademarks@fox.com
`
`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: 6/10/2019
`
`SEARCH OF OFFICE’S DATABASE OF MARKS:  The trademark examining attorney has searched the USPTO’s database of registered
`and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see
`15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
`
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`

`SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
`
`·       Potential Likelihood of Confusion:  Prior Pending Application
`·       Disclaimer Required
`
`POTENTIAL LIKELIHOOD OF CONFUSION:  PRIOR PENDING APPLICATION
`
`The filing date of pending U.S. Application Serial No. 79245178 precedes applicant’s filing date.  See attached referenced application.  If the
`mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a
`likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of
`applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced
`application.
`
`In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict
`between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits
`applicant’s right to address this issue later if a refusal under Section 2(d) issues.
`
`Applicant should note the following application requirement.
`
`DISCLAIMER REQUIRED
`
`Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. 
`See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.   See
`Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
`
`In this case, applicant must disclaim the wording “SPORTS” because it is not inherently distinctive.   This unregistrable term at best is merely
`descriptive of a characteristic of applicant’s services.   See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
`
`F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).  
`
`The identification of services submitted with the application specifies that applicant’s services will be in the nature of “audio and video
`broadcasting services over the Internet in the field of current event news, sports and music.”    Thus, the wording merely describes a characteristic
`of applicant’s broadcasting services which will feature content in the field of sports, and when purchasers encounter applicant’s services, they
`would understand the wording “SPORTS” to indicate this characteristic .
`
`Applicant may respond to this issue by submitting a disclaimer in the following format:  
`No claim is made to the exclusive right to use “SPORTS” apart from the mark as shown.   
`
`For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the
`
`Disclaimer webpage.  
`
`COMMENTS:  Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark
`examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant
`with additional explanation about the refusal and/or requirement in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does
`not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. 
`
`See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  
`
`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.    
`
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`

`

`/Troy Knight/
`Examining Attorney
`Law Office 107
`U.S. Patent and Trademark Office
`(571) 270-3151
`Troy.Knight@USPTO.GOV
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/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.uspto.gov/.   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.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
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`

`

`Print: Jun 7, 2019
`
`7924-5118
`
`DESIGN MARK
`
`serial Number
`T92451T8
`
`Status
`NoN—EINAL ACTICN — MAILED
`
`Word Mark
`Pox
`
`Standard Character Mark
`No
`
`Type of Mark
`TRADEMARK; SERVICE MARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`[3] DESIGN PLUS WORDS, LETTERS ANDXOR NUMBERS
`
`Owner
`beyerdynamic GmbH & Co. KG GMBH & CO. KG FED REP GERMANY
`Theresienstrafie 8 14072 Heilbronn FED REP GERMANY
`
`Goodsmervices
`Class Status -- ACTIVE.
`
`IC 009.
`
`US
`
`021 023 026 036 038.
`
`G & 8:
`
`Electric, electronic and optical measuring, signaling, regulating
`apparatus and instruments,
`included in class 9,
`in particular electric
`apparatus and instruments for electroacoustics and parts thereof;
`apparatus and instruments for recording,
`transmission and reproduction
`of audio signals and parts thereof,
`included in class 9; apparatus for
`recording and reproducing electrical signals,
`in particular sound
`signals: apparatus for the wireless transmission of audio information;
`apparatus for transmission,
`transmission and reception of sound or
`video signals,
`in particular high—frequency sound transmission
`apparatus and apparatus of sound transmission technology; bodypack
`transmitters and receivers,
`in particular bodypack transmitters and
`receivers in the UHF and VHF range, and parts therefor; diversity
`receiver: earbuds; antennas: apparatus for narrowband and broadband
`systems in the field of sound transmission technology;
`transmitters,
`in particular multi—channel transmitters, single—channel transmitters,
`infrared transmitters, RF transmitters; receivers,
`in particular
`multi—channel, single—channel and two—channel receivers,
`infrared
`receivers and HF receivers, headphone receivers, chin—strap receivers
`and parts therefor: apparatus for sound transmission and playback
`apparatus; headsets; conference systems; apparatus for analog and
`digital transmission of audio and video and data signals; software for
`
`such systems for control,
`tuning and regulation; data carriers
`
`.1.
`
`

`

`Print: Jun 7, 2019
`
`7924-5118
`
`
`
`in particular on CD—ROMs, DVDs, hard
`provided with programs; software,
`disks, floppy disks and volatile and non-volatile memories; apparatus
`and instruments of conference and telecommunications technology;
`microphones,
`in particular dynamic microphones, condenser microphones,
`electret microphones, headband microphones, gooseneck microphones,
`shotgun microphones, wireless microphones, clip-on microphones,
`microphones with integrated transmitters,
`in particular condenser
`microphones with built-in radio frequency transmitters, microphone
`modules, pressure microphones, switchable microphones, microphone
`capsules and parts therefor; microphone splitters; microphone cases;
`transducers; electroacoustic transducers,
`in particular headphones,
`dynamic headphones, electrostatic headphones, wireless headphones,
`headphones for use in vehicles and aircraft,
`in particular with
`infrared or radio frequency transmission, headphones with active noise
`compensation,
`loudspeakers,
`including wireless loudspeakers; parts and
`accessories for the electro—acoustic transducers and headphones,
`namely, ear pads, volume controls, amplifiers, battery plugs, plug—in
`chargers, earphone cables; electroacoustic and visual,
`identifiable
`guidance systems also multilingual, consisting of transmitter and
`receiver,
`in particular sound signal receiver and headphones; apps
`[software] for controlling sound recording and playback devices; apps
`[software] for recording and playing sound.
`
`GoodsISe-rvices
`Class Status —— ACTIVE.
`
`IC 038.
`
`US
`
`G & 3: Audio
`
`100 101 104.
`
`communications services; audio teleconferencing; audiovisual
`
`communications services; consultancy services relating to data
`communications, providing access to databases on computer networks and
`the Internet; computerized communication services; data transmission
`services: wireless electronic transmission of images, data and audio
`signals; network conferencing services; electronic communications and
`telecommunications services;
`transmission of information, data,
`advertisements, music, films, radio broadcasts, television broadcasts
`via wireless or wireline networks,
`in particular in the form of online
`Internet services; video communication services; providing video
`conferencing services.
`
`GoodsfServices
`Class Status -- ACTIVE.
`
`IC 041.
`
`US
`
`100 101 10?.
`
`G a S: Audio and
`
`video recording services; training in the field of audio and video
`technology; providing entertainment information; consultancy on film
`and music production; providing digital music from the Internet;
`providing interactive entertainment; providing online videos; music
`hall services; music performances; services of a music library;
`arranging and conducting of seminars; services of a sound and
`television studio; operation of sound and television studios; rental
`of radio and television sets; rental of sound recording apparatus and
`sound reproducing apparatus.
`
`Priority Data
`2018H01H19
`
`

`

`Print: Jun 7, 2019
`
`7924-5118
`
`Colors Claimed
`
`The colorlsl wl'lite.r black and orange isfare claimed as a feature of
`the ma rk .
`
`Filing Date
`2018f05f17
`
`
`
`Examining Attorney
`WHITE, RICHARD
`
`

`

`
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Fox Media LLC (FoxTrademarks@fox.com)
`
`U.S. TRADEMARK APPLICATION NO. 88391700 - FOX SPORTS 3 - 81381208
`
`6/10/2019 10:47:03 AM
`
`ECOM107@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 6/10/2019 FOR U.S. APPLICATION SERIAL NO. 88391700
`
`Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an
`official letter to which you must respond.  Please follow these steps:
`
`(1)  READ THE LETTER by clicking on this link or going to http://tsdr.uspto.gov/, entering your U.S. application serial number, and clicking
`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)  RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from 6/10/2019, using the Trademark Electronic
`Application System (TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.  A response transmitted through
`TEAS must be received before midnight Eastern Time of the last day of the response period.
`
`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.  
`
`(3)  QUESTIONS about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your
`
`application, identified below.  
`
`/Troy Knight/
`Examining Attorney
`Law Office 107
`U.S. Patent and Trademark Office
`(571) 270-3151
`Troy.Knight@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.uspto.gov/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.”   
`
` 
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`

`

`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.uspto.gov/trademarks/solicitation_warnings.jsp.
`
`  
`