Offc Action Outgoing

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.

ISSUE/MAILING DATE:

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).

· Identification and Classification of Goods

Applicant has classified “computer gaming machines” and “handheld electronic game units adapted for use with an external display screen or monitor” in International Class 9; however, effective January 1, 2012, the proper classification is International Class 28. Therefore, applicant must either (1) add International Class 28 to the application and reclassify these goods in the proper international class, or (2) delete the wording “computer gaming machines” and “handheld electronic game units adapted for use with an external display screen or monitor” from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.

An identification for computer software must specify the purpose or function of the software. See TMEP §1402.03(d). If the software is field-specific, the identification must also specify the field of use. Id. Clarification of the purpose, function, or field of use of the software is necessary for the USPTO to properly examine the application and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).

The word “equipment” in the identification of goods is indefinite and must be clarified because it is too broad and could refer to goods in more than one international class. Applicant must amend the identification by stating the common generic name of each item or by describing the nature, purpose and intended use of each item. See TMEP §§1402.01, 1402.03.

The following is an amended version of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type.

Applicant may adopt the following identification of goods, if accurate:

CLASS 09: Computers; computer peripheral devices; computer terminals; computer hardware; computer monitors; cameras; digital format audio players; personal digital assistants, electronic personal organizers, electronic notepads in the nature of notebook computers; handheld digital electronic devices, namely, {specify the nature of the goods, e.g., personal digital assistants} and software related thereto for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; electronic communication equipment and instruments, namely, {specify the common commercial name of the equipment and instruments, e.g., communications servers}; telecommunications apparatus and instruments, namely, {specify the common commercial name of the apparatus and instruments, e.g., telephones}; telephone-based information retrieval software and hardware; mobile digital electronic devices, namely, {specify the common commercial name of the apparatus and instruments, e.g., mobile phones}; global positioning system (GPS) devices; telephones; voice recognition apparatus, namely, {specify the common commercial name of the goods}; digital voice recorders; wireless communication devices for voice, data or image transmission; earphones, headphones; audio speakers; sound recording and reproducing apparatus; microphones; digital audio and video recorders and players; radio transmitters and receivers; car audio apparatus, namely, {specify the common commercial name of the apparatus, e.g., car stereos}; computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; computer and electronic games, namely, computer game software; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications; computer software for personal information management; database management software; database synchronization software; character recognition software; voice recognition software; speech to text conversion software; voice-enabled software applications for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; electronic mail and messaging software; mobile telephone software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use, e.g., computer software to enable the transmission of photographs to mobile phones}; computer software for accessing, browsing and searching online databases; computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; computer equipment for use with all of the aforesaid goods, namely, {specify the common commercial name of the goods, e.g., computer peripherals}; electronic apparatus with multimedia functions for use with all of the aforesaid goods, namely, {specify the common commercial name of the goods, e.g., MP3 players}; electronic apparatus with interactive functions for use with all of the aforesaid goods, namely, {specify the common commercial name of the goods, e.g., MP3 players}; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods, namely, {specify the common commercial name of the goods, e.g., power cables}; covers, bags and cases specially adapted or shaped to contain all of the aforesaid goods

CLASS 28: Computer gaming machines; handheld electronic game units adapted for use with an external display screen or monitor [ADDITIONAL CLASS]

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

INSUFFICIENT FEE

The application identifies goods that are classified in at least 2 classes; however, the fees submitted are sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).

ADVISORY: MULTIPLE CLASS APPLICATIONS

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Section 44(e):

(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class.

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

· Issue Regarding Filing Bases

The application specifies both a basis under Trademark Act Section 1 and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(a)-(b), 1126(d); 37 C.F.R. §2.34(a)(1)-(2), (a)(4). Additionally, the applicant has indicated it does not intend to rely on Section 44(e) as a basis for registration.

However, applicant is advised of the following which will apply in the event it does elect to perfect its 44(e) basis:

To obtain registration under Section 44(e) based on a foreign registration that will issue from a foreign application relied on for priority, an applicant must establish that the country in which the foreign application was filed is its country of origin. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02, 1002.04. Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national. 15 U.S.C. §1126(c); TMEP §1002.04. However, the application shows that applicant has a domicile in California, but the foreign application was filed in Trinidad and Tobago.

Because applicant’s domicile is in a country different from that which issued the foreign registration, the record is unclear as to whether applicant’s country of domicile is also applicant’s country of origin. See 15 U.S.C. §1126(c); TMEP §1002.04. When applicant submits the foreign registration, applicant will be required to establish that the country where the foreign application was filed is a country of origin. See TMEP §§1002.01, 1002.02, 1002.04. This requirement may be satisfied by providing a written statement for the record that applicant has a bona fide and effective industrial or commercial establishment in Trinidad and Tobago. TMEP §1002.04. If applicant cannot assert that the country in which the foreign application was filed is a country of origin, registration under Section 44(e) will be refused. 15 U.S.C. §1126(c); TMEP §1002.01. In that case, applicant may amend the application to delete the Section 44(e) basis and rely solely on Section 1(b) as a basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §806.04.

If the U.S. application satisfied the requirements of Section 44(d) as of the filing date of that application, applicant may retain the priority filing date without perfecting the Section 44(e) basis, as long as there remains a valid basis for registration under Section 1. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

CONTACT INFORMATION

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Christine Martin/

Examining Attorney

Law Office 104

(571) 272-1630

christine.martin@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.