Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/638176

 

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

 

1.  Information:  No Similar Marks

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02. 

 

The applicant must respond to the following requirements.

 

2.  Requirement:  Claim of Ownership

If applicant is the owner of U.S. Registration No. 2998241, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 2998241.

 

 

4.  Requirement: Correct Identification of Goods & Services

The applicant must correct several items listed in the identification of goods and services. 

 

a.  as to computer software for use in playing video games

Applicant must clarify the identification of Computer software for use in playing video games to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant may adopt the following identification of goods, if accurate:  Computer game software, in International Class 9.  TMEP § 1402.01.

 

 

b.  as to computer software for use in playing massive multi-player online role-playing games

Applicant must clarify the identification of computer software for use in playing massive multi-player online role-playing games to specify the common commercial or generic name for the goods or services.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant may adopt the following identification of goods, if accurate:  Computer game software featuring role-playing games, in International Class 9; and/or Entertainment services, namely, providing on –line multi-player computer games featuring role-playing, in International Class 41.  TMEP § 1402.01.

 

c.  as to computer software for use in television programming

The current wording “computer software for use in television programming” used to describe the goods needs clarification because it does not sufficiently describe the purpose(s) or function(s) of the software. If the software is field-specific, then applicant must also specify the field of use.  TMEP §1402.03(d).  This additional information is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant's mark and other marks.  See In re NA.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).  Applicant may adopt the following identification of goods, if accurate:  Computer software for creating television programming schedules used in the field of television production, in International Class 9; and/or Computer software for operating television program recording apparatus, in International Class 9.  TMEP §1402.01.

 

d.  as to  massive multi-player online role-playing games

The wording “massive multi-player online role-playing games” in the identification of services needs clarification because it does not specify the common commercial name of the services.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.  Applicant may adopt the following identification, if accurate: Entertainment services, namely, providing on –line multi-player computer games featuring role-playing, in International Class 41.  TMEP §1402.01.

 

e.  as to integrated in television, shows, and movies

The current wording integrated in television, shows, and movies used to describe the goods needs clarification because it describes a feature, but no good or service by common commercial name.    TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  Computer game programs featuring themes from popular television shows and movies, in International Class 9.  TMEP §1402.01.

 

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9 and 41.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

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://tess2.gov.uspto.report/netahtml/tidm.html. 

 

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

 

5.  Requirements for Multiple Class Applications

 Where an application is based on use of the mark in commerce, applicant must satisfy the following requirements:

 

(1)  Applicant must submit a statement that “the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”

 

(2)  Applicant must specify the date of first use of the mark anywhere on or in connection with the goods or services;

 

(3)  Applicant must specify the date of first use of the mark in commerce as a trademark or service mark; and

 

(4)  Applicant must submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., showing how the applicant actually uses the mark in commerce).  If the specimen was not filed with the initial application, applicant must submit a written statement that “the specimen was in use in commerce at least as early as the application filing date.”

 

These requirements must be verified by applicant in a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

If applicant adds any classes, then applicant must submit a specimen showing use of the mark for each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  Applicant must also submit a statement that "the new specimen was in use in commerce on or before the application filing date," verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a).  If the new specimen is the same as the specimen(s) already of record, then applicant need not verify the date of use.

 

Applicant must amend the application to include dates of first use and use in commerce for each class of goods and/or services.  37 C.F.R. §2.86(a); TMEP §1403.01. If the dates differ from those already of record, then applicant must verify the new dates with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP 903.05.

 

 

6.  Requirement:  Disclaimer

Applicant must insert a disclaimer of “GAMES” in the application because the word is descriptive of the purpose of applicant’s goods.  See applicant’s own identification of goods.   Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “GAMES” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

      If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

/Joanna M. Dukovcic/

Trademark Examining Attorney

Law Office 101

Phone:  (571) 272-9707

 

 

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 has been 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.