Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on 06/11/08.  The statement regarding the name in the mark is acceptable and the requirement has been satisfied.  The requirement to submit an acceptable identification and classification of goods is maintained and made FINAL.

 

IDENTIFICATION OF GOODS

 

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The proposed amendment to the identification cannot be accepted because the wording “interactive entertainment software, namely, interactive video game programs, interactive multimedia computer game programs, computer game software, computer game cartridges, computer game discs, interactive video games of virtual reality comprised of computer hardware and software; downloadable software for use in connection with computer games; computer game software for use with communication devices and mobile telephones; computer and video game apparatus, namely, video game machines for use with televisions; pre-recorded audio and video tapes featuring music; gaming machines” refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording must be deleted from the identification.

 

The identification of goods is indefinite and must be clarified because applicant should add the wording “and” in between the wording “compact discs” and “cd-roms” to clarify the subject matter of the goods.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

laser discs, video discs, phonograph records, compact discs, cd-roms featuring games, films, and music, in class 9.

 

Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.

 

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.  See TMEP §1402.04.

 

RESONSE TO FINAL OFFICE ACTION – PARTIAL REQUIREMENT

 

If applicant does not respond within six months of the mailing date of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  interactive entertainment software, namely, interactive video game programs, interactive multimedia computer game programs, computer game software, computer game cartridges, computer game discs, interactive video games of virtual reality comprised of computer hardware and software; downloadable software for use in connection with computer games; computer game software for use with communication devices and mobile telephones; computer and video game apparatus, namely, video game machines for use with televisions; pre-recorded audio and video tapes featuring music; laser discs, video discs, phonograph records, compact discs, gaming machines.  The application will then proceed forward for the remaining goods.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by: 

 

(1)   Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)   Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Ramona Ortiga Palmer/

Trademark Examining Attorney

Law Office 117

571-272-9715

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.