UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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  76/577626

 

This letter responds to the applicant’s communication filed on March 21, 2005.  In the foregoing communication, the applicant amended the identification of goods.  The examining attorney remains of the opinion that the identification is unacceptable as overly broad and ambiguous.  Accordingly, the requirement for an acceptable identification is hereby maintained and made FINAL.

 

Although the examining attorney has carefully reviewed the applicant’s response, she is not persuaded by the applicant’s arguments for the following reasons:

 

Identification of Goods

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The current wording used to describe the goods needs clarification because the nature of some of the goods is unclear.  For example, the terms “ability and action games,” “skill games,” “mobiles,” and “building blocks” are indefinite.  Further, applicant has included goods that are classified in other international classes, such as “discs and cartridges for video games in International Class 9.”  Applicant must amend the identification to clearly and concisely indicate the goods using common commercial terms and classify them correctly.  TMEP §1402.01.

 

Further, applicant’s amended identification includes goods that are beyond the scope of goods submitted with the initial application.  Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.  Applicant may adopt the following identification of goods, if accurate:   

 

Discs and cartridges for video games in International Class 9.

 

Rubber balls; action figures and accessories therefor; action target games; bean bag dolls; stuffed toys; balloons; bathtub toys; Christmas tree decorations; board games; toy building blocks; equipment sold as a unit for card games; dolls and doll clothes; doll accessories; toy cosmetics for children; crib toys; electric action toys; action skill games; puzzles; kites; toy mobiles; music box toys; party favors in the form of small toys; inflatable pool toys; multi-action toys; jump ropes; target games; disc-type toss toys; bow and arrow toys; toy vehicles; toy cars; toy trucks; toy pail and shovel sets; roller skates; toy model hobby craft kits; toy rockets; toy guns; toy holsters; musical toys; toy badminton sets; bubble-blowing wands and solution sets; toy figurines; toy banks; puppets; yo-yos; skateboards; toy scooters; electronic hand-held games; and playing cards in International Class 28.

 

Additions To Identification Not Permitted

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Insufficient Fee

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least two international classes, however applicant paid the fee for only one class.

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Multiple Class Application

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

Applicant’s Response

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application:  “and accessories, ability and action games,” “golf balls; tennis balls,” “building blocks,” “discs and cartridges for video games,” “skill games,” “golf gloves, golf ball tees,” “mobiles,” “face masks.”  The application will then proceed forward for the remainder of the goods.  37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Ellen J.G. Perkins/

Ellen J.G. Perkins

Trademark Examining Attorney

USPTO Law Office 110

(571) 272-9372

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.