Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/610513      

 

NOTICE OF SUSPENSION

 

Action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant's country of origin.  If the registration is in a foreign language, an English translation must be submitted. The true copy, photocopy, certification, or certified copy of the registration should be forwarded to the Examining Attorney as soon as possible.  If the foreign application is abandoned, the Examining Attorney should be advised.

 

Other Requirements

 

Please note, portions of the amended identification and recitation are unacceptable for the reasons set forth below.  The applicant may wish to either address the following issues now or upon submission of the foreign registration.

 

The applicant has amended its class 9 goods to: “computer game software; computer hardware; embedded computer game software; computer peripherals; electronic game programs; computer games discs; video games discs; computer and video games software; computer and video games software downloaded via the internet; computer games cartridges, video games cartridges; videos featuring computer and video game content.”

 

“Videos featuring computer and video game content” must be amended to state that the goods are prerecorded. Moreover, the nature of the “computer and video game content” must be further clarified. If accurate, the applicant may consider amending to “prerecorded videos featuring programs relating to computer gaming and computer game content.”

 

The remainder of the applcant’s class 9 identification is acceptable. Similarly, the class 38 recitation is acceptable.

 

The applicant has recited its class 41 services as “entertainment services; production and rental of computer games and video games; production and rental of computer games and video games software.” As noted before, “entertainment services” is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the services. The remainder of the class 41 recitation is acceptable.

 

Amendment Guidelines

 

As noted above, the applicant’s goods/services are indefinite and, as such, may fall into more than the number of classes in the application. If so, the applicant must heed the following requirements: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01.   If the applicant adds a class, it must fulfill the either Section 1(a) use-basis requirements or Section 1(b) intent-to-use basis requirements for the new class. 

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

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/.

 

 

 

 

 

 

 

 

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(571)272-9436