UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/638984
APPLICANT: Bluetorch On-Line Games, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: RYL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 101553.13408
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/638984
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
Registration is refused because the proposed mark, as used on the specimen of record, does not function as a service mark to indicate the source of the services. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.
The specimen consists of what appears to be a CD-ROM cover and does not consist of advertising, promotional materials or other acceptable evidence of use for the services. The mark does not function as a trademark on the specimen because it does not show use of the mark on advertising, promotional materials or other acceptable evidence of use for the services.
Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
This refusal will be withdrawn if applicant submits both (1) a substitute specimen showing use as a trademark, and (2) a statement that “the substitute specimen was in use in commerce at least as early as 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); TMEP §904.09.
If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05.
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
If applicant cannot comply with the requirement for an acceptable specimen for the Section 1 (a) basis asserted or has not used the mark in commerce prior to the filing date of the application, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, applicant may wish to amend the application to assert a Section 1(b) basis.
Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis under Section 1(b) of the Trademark Act:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
Trademark Act Section 44, 15 U.S.C. §1126. This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. Trademark Act Section 44, 15 U.S.C. §1126; 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §1008.
The recitation and classification of services is unacceptable as indefinite. The language "integrated in television, shows, and movies" is vague and indefinite. What does this mean? Does the applicant provide "television news shows" for example? Does the applicant produce motion picture films? Are the goods motion picture films? If so, the applicant must state the subject matter. If the applicant provides a television show or similar entertainment, the applicant must specify the services an give the subject matter of the program. The applicant must amend the identification to specify the common commercial name of the services. If there is no common commercial name, the applicant must describe the nature of the services. TMEP §1402.01. Applicant may adopt the following recitation and classification of services, if accurate:
Class 41: entertainment services, namely, providing interactive online computer games; massive, multi-player online role-playing computer games;
Class 42: providing a website featuring on-line, non-downloadable software for playing video games.
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 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 goods set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
Applicant must submit a new declaration stating that applicant believes it is the owner of the mark, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a). The previously submitted declaration is defective because it states that applicant is entitled to use the mark in commerce, but not that the applicant is the owner of the mark. 15 U.S.C. §1051(a)(3), 37 C.F.R. §2.33(b)(1); TMEP §804.02.
The following is a properly worded declaration for a §1(a) application:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
The mark contains stippling. If the stippling is a feature of the mark, the applicant must submit a statement that the stippling shown in the drawing is a feature of the mark. 37 C.F.R. §2.37; TMEP §808.01(d). However, if the stippling is meant to indicate shading, the applicant must submit a statement that the stippling in the drawing is for shading purposes only. 37 C.F.R. §2.37; TMEP §808.01(d).
PLEASE NOTE: Applicant is encouraged to telephone the trademark examining attorney to resolve most of the issues raised above. If the examining attorney is unavailable, the applicant is encouraged to leave a detailed voicemail message including its name, phone number, serial number and instructions regarding each issue raised in this action.
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
/Laurie Mayes/
Trademark Attorney
Law Office 101
PH (571) 272-5874
Fax (571) 273-9101
HOW TO RESPOND TO THIS OFFICE ACTION:
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.