Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/497921

 

The following issues were discussed in communication with Linda Kim on September 9, 2003.

 

Identification of Goods

 

The wording "on-line computer games" in the identification of goods identifies services classified in International Class 41.   A manual containing a listing of goods or services and proper wording for each classification is available on-line at the U.S. Patent and Trademark Office’s web site: www.uspto.gov. The applicant may adopt the following formats, if accurate:

 

“computer game software” in International Class 9;

 

“on-line computer games” in International Class 41.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services recited in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)     The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Basis--Specimen Submitted

 

It is unclear under what basis the application is filed because it appears the applicant has submitted a specimen.  However, the applicant has listed Section 1(b) as the basis.  An application may be filed based on any of the following:

 

(1)  use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));

 

(2)  a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));

 

(3)  a claim of priority, based on a foreign application filed within six months prior to the United States, under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c));

 

(4)  registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)). 

 

The applicant must specify at least one basis for filing and the applicant must submit all of the requirements for the basis asserted.  TMEP §806.  Depending on the circumstances, the applicant may be entitled to assert more than one basis for filing.  In such a case, the applicant must:  (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis, and (3) separately list each basis, followed by the goods or services to which that basis applies.  See 37 C.F.R. §2.34.  TMEP §§806.02 et seq.

 

Although multi-basis applications are permitted, the applicant may not assert both use in commerce under Trademark Act Section 1(a) and intent to use the mark in commerce under Trademark Act Section 1(b) for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

 

 

 

 

 

 

 

 

/Christopher L. Buongiorno/

Law Office 113

(703) 308-9113  ext. 460

 

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm