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. 

 

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  76/652321

 

This is a non-final office action.

 

The refusal and potential refusal under Section 2d is withdrawn as to those registrations and applications of which applicant has established ownership (ie those listed under the owner names of Kabushiki Kaisha Bandai Corporation; Bandai America Incorporated and Namco Bandai Games Inc.), pending recordation of the assignments related to those which are owned pending the filed assignments (Kabushiki Kaisha Namco, also trading as Namco Ltd).  As to the remaining registrations and applications, the refusal and potential refusal under Section 2d is continued and maintained.  Note that some of these may be withdrawn following applicant’s clarification of its recitation of goods and services, as noted below.

 

The translation is acceptable.

 

The requirements to amend the identification of goods and services are continued and maintained.

 

The applicant’s response raises the following new issues.

 

Foreign Registration as Basis

The original application was under Section 1b ONLY and not under Section 44.  Applicant has attached a copy of a foreign registration and stated that it intends to rely on such registration.  However, applicant has not clearly and properly amended to include Section 44e as a basis.  It is not clear whether this inclusion was accidental.  Applicant must be clear that it is amending to a Section 44 basis in this application. Further, an application based on a foreign registration must include the following and no. (1) has not been satisfied: [No (3) is satisfied because the application was filed under Section 1b, which contains such a declaration.  TMEP Section 806.02(g)]

 

(1)   A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant’s country of origin.  Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002 et seq. and 1004.01 et seq. NOTE THAT APPLICANT’S FOREIGN REGISTRATION SUBMISSION IS NOT COMPLETE AS THERE IS NO DRAWING PAGE SHOWING ANY MARK. Therefore, this element is not satisfied.

 

(2)   An English translation of the foreign registration if the foreign certificate of registration is not written in English.  The translator should sign the translation.  TMEP §1004.01(b).

 

(3)   The following statement, verified in an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services as of the application filing date.” 

 

15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

Identification of Goods and Services

Applicant must rewrite the identification of goods and services in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).  Applicant has created a “stream” identification where goods and services are not clearly separated in a way that makes a coherent identification.  Applicant has amended to list various classes within the body of a “super” stream identification of goods/services. The goods and services before these inclusions would appear to be in the class of the inserted goods/services, which is clearly not the case. For example, applicant begins the identification of goods by listing a class 10 inserted item and then a class 9 inserted item, and then lists a number of goods and then a class 21 inserted item.  The items between would appear from the writing to be in class 21, however, they are in fact in class 9.  The identification bounces back and forth between classes, leaving the items in between uncertain.  The entire “super” identification creates an identification stream which is very difficult to read and discern.   Applicant must rewrite the identification of goods and services so as to show each class of goods and services as a separate unit, not piecemeal throughout an unclear identification stream.   

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  If the applicant has questions regarding the status of the application, the applicant should check the uspto.gov website.

 

 

Advisory if applicant amends to include a proper Section 44e basis:  Basis for Registration-Section 44(e)/1(b)

The applicant has filed relying on its claim of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and now on a foreign registration under Section 44(e), 15 U.S.C. Section 1126(e) (assuming applicant so amends).  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.  The applicant must advise the examining attorney, however, if the applicant intends to rely solely on the foreign registration as the basis for registration.

 

Unless the applicant indicates otherwise, this Office will presume that the applicant wishes to rely on Section 1(b) as well as on Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

 

 

/Rebecca Gilbert/

Law Office 103

571-272-9431

 

 

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.