Offc Action Outgoing

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e). See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3). However, the foreign registration alone may serve as a basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d). If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant must request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04.

Unless applicant indicates otherwise, this Office will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication once all the requirements for the Section 44(e) filing basis have been met, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

U.S. APPLICANT AND SECTION 44(e) FILING BASIS

Applicant is domiciled in the United States and has asserted a Trademark Act Section 44(e) filing basis in its application. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3). However, an applicant domiciled in the United States is generally not eligible to register a mark under Section 44(e) unless the applicant (1) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (2) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin. 15 U.S.C. §1126(b)-(c); see TMEP §§1002.03, 1002.04, 1002.05. “Country of origin” refers to the country in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the country in which an applicant is domiciled. 15 U.S.C. §1126(c); TMEP §1002.04.

If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:

(1) A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq. If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01; and

(2) A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04, 1002.05.

Applicant has submitted the registration, but has not met the second requirement. If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to rely solely on the Section 1(b) basis.

IDENTIFICAITON OF GOODS

The wording “electronic educational game machines” in the identification of goods is indefinite and must be clarified because the intended users of the game machines are not specified. See TMEP §1402.01. Additionally, the wording “toys, namely battery-powered computer games” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. Generally speaking, “computer game consoles” that require an external display screen that is not part of the game unit are classified in International Class 9 while “computer game units” that incorporate the screen in the game unit (i.e., “stand alone”) are classified in International Class 28. Therefore, applicant must make such a distinction in the identification of goods.

Applicant may adopt the following identification, if accurate:

International Class 9: Toys, namely battery-powered computer games for use with an external display screen or monitor

International Class 28: Toys, games and playthings, namely, hand-held units for playing electronic games; hand-held units for playing video games; stand alone video game machines; electronic games other than those adapted for use with television receivers only; LCD game machines; electronic educational game machines for children; toys, namely battery-powered computer games with LCD screen which features animation and sound effects

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.

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.

PROSECUTING A MULTIPLE CLASS APPLICATION

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 Section 44(e):

(1) Applicant must list the goods and/or services by international class; 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).

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

RESPONSE GUIDELINES

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

/MDI/

Marilyn D. Izzi

Trademark Examining Attorny, Law Office 112

(571) 270-1523 (phone)

(571) 270-2523 (fax)

marilyn.izzi@uspto

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.