To: | Apple Inc. (trademarkdocket@apple.com) |
Subject: | U.S. Trademark Application Serial No. 88462991 - ARCADE - N/A |
Sent: | September 05, 2019 04:40:05 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88462991
Mark: ARCADE
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Correspondence Address: |
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Applicant: Apple Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: September 05, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
DUAL FILING BASIS
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016. A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
(2) If applicant does not intend to rely on Section 44(e) as a basis for registration but still wants to retain the Section 44(d) priority filing date, applicant must so specify and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
In this case, applicant must disclaim ARCADE because it is not inherently distinctive, because it describes a type of game which the services include, per the attached definition. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ARCADE” 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.
IDENTIFICATION OF GOODS AND/OR SERVICES
The wording in the identification of goods and/or services needs clarification in the following respect(s).
Applicant may substitute the following wording, if accurate:
035: advertising, marketing, and promotion services; promoting the goods and services of others; retail store and online retail store services featuring computer, electronic and entertainment products and computer software; retail store services provided via the internet and other computer electronic and communications networks; retail store services featuring computer, electronic and entertainment products and computer software provided via the internet and other computer, electronic and communications networks; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the internet and other electronic and communications networks; providing subscriptions to downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, via the internet and other electronic and communications networks
041 OK: development, production, distribution, and presentation of multimedia entertainment content; providing non-downloadable computer games, electronic games, interactive games, and video games
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.
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.
How to respond. Click to file a response to this nonfinal Office action
/Hsu, Fong/
Trademark Examining Attorney
Law Office 117
U.S. Patent & Trademark Office
Office: (571) 272-2001
Fax: (571) 272-2002
RESPONSE GUIDANCE