Offc Action Outgoing

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.

Name Differs in Application and Foreign Registration

Under Trademark Act Section 44(e), 15 U.S.C. Section 1126(e), only the owner of a foreign registration can apply to register in the United States. 37 C.F.R. Section 2.34(a)(3). In this case, the foreign certificate specifies an owner other than the applicant. Therefore, registration is refused because the applicant is not the owner of the mark. Trademark Act Sections 1 and 44, 15 U.S.C. §§1051 and 1126. Under 15 U.S.C. §1126, the applicant must be the owner of the foreign registration on the filing date of the United States application. 37 C.F.R. §2.34(a)(3); TMEP §1005. In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991). The applicant herein is “Kabushiki Kaisha Sega” but the owner of the foreign registration is “Kabushiki Kaisha Sega Enterprises.”

If the applicant is the owner of the foreign registration and can prove ownership of the foreign registration by an assignment before filing in the United States, the §44 basis can remain in the application. The applicant must submit a substitute certificate of registration, a verification from the foreign trademark office that reflects the applicant’s ownership of the foreign registration and the date of the assignment, or evidence that the foreign registration was assigned to the applicant before the filing date in the United States. TMEP §§1005 and 1006.

If the applicant did not own the foreign registration on or before the filing date, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. In this case, the applicant may wish to amend the application to reinsert the Section 1(b) basis.

Foreign Registration

Notwithstanding the above, please note that the foreign registration must be in force at the time the United States issues the registration based on that foreign registration. In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784 (TTAB 2003). In this case, the translation of the foreign “Certificate of Trademark Registration” does not include the date that the mark was registered, nor the date that the foreign registration expires. (The July 14, 2000 date appears to be the date that the Certificate was signed by the Commissioner of the Japan Patent Office.) Therefore, applicant must submit a certification from the intellectual property office of the foreign country, or a copy of the foreign registration that shows that the foreign registration will be in force at the time the registration issues in the United States. 37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a), and gives the dates of registration and expiration.

Wording is Beyond Scope of Foreign Registration

The wording “flash memory cards” in the identification of goods/services is beyond the scope of the goods/services listed in the foreign registration certificate and, therefore, must be deleted from the U.S. application. The goods or services identified in an application under Trademark Act Section 44, 15 U.S.C. §1126, may not exceed the scope of those appearing in the foreign application or registration. 37 C.F.R. §2.32(a)(6); TMEP §§1012 and 1402.01(b).

Identification of Goods/Services Unacceptable

The wording “home video game machines” in the identification of goods/services is unacceptable as indefinite. Applicant must clarify the wording to indicate “for use with televisions,” which would make these Class 9 goods, or to indicate that they are “standalone” game machines in Class 28. TMEP §1402.01. (Either wording would be within the scope of the foreign registration.)

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 under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):

(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. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

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.

/James T. Griffin/

Examining Attorney, Law Office 103

(571) 272-9169

Informal communications only:

jim.griffin@uspto.gov

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.