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. 

 

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  76/646304

 

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

 

1.)    IDENTIFICATION OF GOODS

 

The identification of goods presently reads as follows:

 

“board games, card games, action type target games, and parlor games; beanbags; toy building blocks; paper cardboard and plastic caps for toy guns, holders for caps, and cap guns; mechanical action toys; kites; electric action figures with lights and sounds; collectible items, plastic toy figurines in various sizes, toy finger rings, necklaces, key rings, bracelets; yo-yo's; spin tops; plastic toys; toys incorporating magnets; toy containers; plush toys; flying discs; glass ornaments and decorations for Christmas trees; costume masks; stuffed toy animals in various sizes; equipment sold as a unit for playing card games; game boards for trading card games; toy stamps with figures; toy and water pistols, guns, and cannons; dolls and baby dolls; balloons; bathtub toys; skateboards, ice skates, roller skates, and inline skates; surf boards and swim boards; balls, electronic toys; jigsaw puzzles, and other games and toys.”

 

The following wording is unacceptable for the reasons as follows:

 

The wording “holders for caps” and “cap guns” in the identification of goods needs clarification because, as worded, it is unclear these are ‘toy’ items.  Applicant must amend the identification of goods to indicate these items are toys.  TMEP §1402.01.  Applicant may adopt the following wording, if accurate:  “holders for toy cap gun caps” and “toy cap guns.”

 

The wording "collectible items" in the identification of goods needs clarification because the exact nature of the goods is unclear.  For proper classification of the goods, applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  Because of the indefinite nature of this wording and the lack of evidence in the application record, the trademark examining attorney is unable to make a suggestion concerning this wording.  But please note applicant must take care to classify the amended goods in the proper international class.

 

The wording “necklaces,” “key rings” and “bracelets” in the identification of goods needs clarification because, as worded, it is unclear these are ‘toy’ items.  Applicant must amend the identification of goods to indicate these items are toys.  TMEP §1402.01.  Applicant may adopt the following wording, if accurate:  “toy necklaces,” “toy key rings” and “toy bracelets.”

 

The wording "plastic toys" in the identification of goods needs clarification because the exact types of toys are unclear.  Applicant must amend the identification of goods to specify the common commercial or generic name for the toys.  If there is no common commercial or generic name for the product, then applicant must describe the product in detail.  TMEP §1402.01.  Applicant may adopt the following wording:  “plastic toys, namely [SPECIFY common commercial names of toys].”

 

The wording "toys incorporating magnets" in the identification of goods needs clarification because the exact nature of the toys is unclear.  For proper classification of the goods, applicant must amend the identification of goods to more clearly describe the product in detail.  TMEP §1402.01.  Applicant may adopt the following wording:  “toys incorporating magnets, namely [SPECIFY common commercial names of toys].”  [Note:  ‘magnets’ are generally classified in International Class 9, although there is a lack of information in the present record to determine the proper classification of these particular items at this time.]

 

The wording "toy containers" in the identification of goods needs clarification because the exact nature of the goods is unclear.  Applicant must amend the identification of goods to specify the common commercial or generic name for the toy containers.  If there is no common commercial or generic name for the product, then applicant must describe the product in detail.  TMEP §1402.01.  Applicant may adopt the following wording:  “toy boxes” (in International Class 28); or “toy chests” (i.e., a furniture item -- in International Class 20).

 

The wording "balls" in the identification of goods needs clarification because the exact types of balls are unclear.  Applicant must amend the identification of goods to specify the types of balls.  TMEP §1402.01.  Applicant may adopt the following wording:  “balls, namely [SPECIFY types of balls, e.g., beach balls, basket balls, foot balls, tennis balls].”

 

The wording "electronic toys" in the identification of goods needs clarification because the exact types of toys are unclear.  Applicant must amend the identification of goods to specify the common commercial or generic name for the toys.  If there is no common commercial or generic name for the product, then applicant must describe the product in detail.  TMEP §1402.01.  Applicant may adopt the following wording:  “electronic toys, namely [SPECIFY common commercial names of toys].”

 

The wording "other games and toys" in the identification of goods needs clarification because the exact nature of the goods is unclear.  For proper classification of the goods, applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  Because of the indefinite nature of this wording and the lack of evidence in the application record, the trademark examining attorney is unable to make a suggestion concerning this wording. 

 

For assistance with identifying and classifying 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 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.

 

NOTE:  The remainder of the wording in the Class 28 identification of goods is acceptable as written.  However, applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

2.)    REQUIREMENTS FOR COMBINED APPLICATIONS

 

As indicated above, the application identifies goods that may be classified in more than one international class.  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 (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

3.)    MEANING OF WORDING

 

Applicant must specify whether the wording “SOUND” or “POPS” has any significance in the toy trade or industry or as applied to the specific goods described in the application.  37 C.F.R. §2.61(b).

 

 

4.)    SEARCH RESULTS

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

Information regarding pending Application Serial No. 78468663 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

 

 

 

 

/Martha Santomartino/

Trademark Attorney

Law Office 112

(571) 272-9416

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.