UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/540844

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

 

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. §1052(d).  TMEP §704.02.

 

Identification of Goods

 

International Class 3

 

The identification of goods in class 3 is acceptable as written

 

International Class 16

 

The wording “calendars, books, exercise-books, modeling plastic materials, stationary namely sketch-books, diaries, pens, pencils, rulers, felt pens, colors, pencil cases, document holders, paper, playing cards, photograph frames, greeting cards, stationary adhesive tapes” in the identification of goods is unacceptable as indefinite and too broad because it could include items classified in other classes.  The applicant may amend the identification to substitute the following wording, if accurate:  Rulers, namely, ____[specify type, e.g., folding rulers, graduated rulers, tape rulers], Int. Cl. 9; Calendars, books in the field of  ___ [specify the subject matter], exercise-books, plastic materials for modeling, stationary namely sketch-books, diaries, pens, pencils, rulers ______ [specify type, e.g., drawing rulers, drafting rulers, ungraduated rulers], felt pens, pencil cases, document holders, paper ____[specify type, e.g. bond paper, art paper, writing paper, copy paper], greeting cards, adhesive tapes for stationery purposes, Int. Cl. 16; photograph frames, Int. Cl. 20; playing cards, Int. Cl. 28.  TMEP §§1402.01 and 1402.03.

 

The wording “colors,” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

International class 25

 The identification of goods listed in class 25 is acceptable as written. 

International Class 28    

The wording “Plush toys, rubber toys, wooden toys, plastic toys, musical toys, playing balls, building blocks (toys), scooters (toys), dolls, doll's rooms, clothes for dolls, dominos, slot machines, backgammon games, dice, chess games, educational games for teaching arithmetic, reading skills, languages, geography, science, astrology, anatomy, history, physics, rules of the road, drawing, games for memory skills, riddles; puzzles and similar games; games such as drafts, chess, sea battles; bingo (other games with numbered cards and disks extracted one at a time); games with master charts, dice and cards; games with electronic magic writing boards; games with electronics keyboards; games with electronic video; games with electronic pens; tape and CD-ROMs for videogames; pre-recorded video tapes, pre-recorded DVD and pre-recorded CD-ROMs” in the identification of goods is unacceptable as indefinite and too broad because it could include items classified in other classes.  The applicant must delete the parenthesis.  Use of parenthesis in the identification of goods is unacceptable. Please note that video game tapes, discs, DVDs and CD ROMs are classified in class 9.  The applicant may amend the identification to substitute the following wording, if accurate:  Slot machines; Video game CD-ROMs; pre-recorded video game tapes, pre-recorded video game DVD and pre-recorded video gamed ROMs, Int. Cl. 9; Plush toys, rubber toys, wooden toys, plastic toys, musical toys, playing balls, toy building blocks, toy scooters, dolls, doll's rooms, clothes for dolls, dominos, backgammon games, dice, chess games, educational games for teaching arithmetic, reading skills, languages, geography, science, astrology, anatomy, history, physics rules of the road and, drawing, equipment sold as a unit for playing memory games , puzzles; games, namely, drafts, chess, sea battles; bingo, games with numbered cards and disks extracted one at a time; games with master charts dice and cards; games with electronic magic writing boards; games with electronics keyboards;  games with electronic video ____[specify, e.g., hand held units for playing video games ]; games with electronic pens _____ [specify, e.g., board games with electronic pens], Int. Cl. 28.

 

The wording “riddles, ” “and similar games” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

International Class 41

 

The wording “Show and film productions, Production and distribution of motion pictures in the form of serial films and cartons, video tapes and optical disks;” in the recitation of services is too broad because it could include services classified in other classes   Production and distribution of motion pictures involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. This is not the case when distribution relates to videotapes, audiotapes or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer. For this reason, distribution of videotapes, audiotapes, video disks, etc. should not be accepted as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in Class 41.  The applicant may amend the identification to substitute the following wording, if accurate:  Motion Picture film production, production and distribution of motion pictures; production of radio and television programs, production of radio and television programs; rental of exposed movie films, pre-recorded video tapes pre-recorded video disks, phonograph records, pre-recorded audio tapes, pre-recorded audio disks and pre-recorded CD-ROMs; entertainment in the nature of visual and audio performances; multimedia entertainment software production services, Int. Cl. 41.  TMEP §1402.11.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

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 that are not within the scope of goods/services set forth in the present identification.

 

Combined Application

 

The application identifies goods that may be classified in several international classes.  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.   The applicant has paid for five classes.

 

Significance of the Mark

 

The applicant must indicate whether the wording “CLUB” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b). If yes, then this wording must be disclaimed apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  For example the services in class 41 involves club membership, then this wording is descriptive as applied to the services and must be disclaimed as to class 41.  For applicant’s convenience, the examining attorney has attached the dictionary definition of “club.”

 

Description of the Mark

 

The applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The statement may be in the following form:

 

The mark consists in part of the word WINX with a stylized letter X in the form of ___  [specify the nature of the design element].

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

(703) 308-9110 Ext. 423

 

 

 

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

 

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

 

Attachment:

 

Club

 
club (klùb) noun

1.   A stout, heavy stick, usually thicker at one end, suitable for use as a weapon; a cudgel.

2.   Sports. An implement used in some games to drive a ball, especially a stick with a protruding head used in golf.

3.   Games. a. A black figure shaped like a trefoil or clover leaf on certain playing cards. b. A playing card with this figure. c.  clubs (used with a sing. or pl. verb). The suit of cards represented by this figure.

4.   A group of people organized for a common purpose, especially a group that meets regularly: a garden club.

5.   The building, room, or other facility used for the meetings of an organized group.

6.   Sports. An athletic team or organization.

7.   A nightclub.

 

noun, attributive

Often used to modify another noun: a club meeting; club regulations.

 

verb

clubbed, club·bing, clubs verb, transitive

1.   To strike or beat with or as if with a club.

2.   To use (a firearm) as a club by holding the barrel and hitting with the butt end.

3.   To gather or combine (hair, for example) into a clublike mass.

4.   To contribute to a joint or common purpose.

 

verb, intransitive

To join or combine for a common purpose; form a club.

 [Middle English, from Old Norse klubba.][1]