| To: | Nintendo Co., Ltd. (efiling@cojk.com) |
| Subject: | TRADEMARK APPLICATION NO. 77583731 - WII SPORTS RESORT - NOAM-2-37744 |
| Sent: | 1/13/2009 12:21:03 PM |
| Sent As: | ECOM108@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 77/583731
MARK: WII SPORTS RESORT
|
|
|
CORRESPONDENT ADDRESS: JERALD E. NAGAE, REG. NO. 29,418, |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
|
|
APPLICANT: Nintendo Co., Ltd.
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 1/13/2009
Preliminary Amendment
Applicant’s Preliminary Amendment filed January 9, 2009 is accepted and entered.
Potential 2(d) Likelihood of Confusion
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.
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.
Claim of Ownership of Prior Registrations
If applicant is the owner of U.S. Registration Nos. 3500328, 3494185, and 348258, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 3500328, 3494185, 348258, and others.
Identification of Goods
The identification of goods is unacceptable as indefinite. Applicant must clarify the identification of goods by specifying that its “programs for video games” are computer programs. Applicant must specify that its “controllers” are player-operated electronic controllers. Applicant must specify types of “parts and fittings for video game machines.” Applicant must specify that it “game programs for cellular phones” is an electronic game program. Applicant must state that its “headsets with microphones” are for use with computers. Applicant must specify types of “parts and fittings for cellular phones.” Applicant must specify types of “telecommunication machines and apparatus.” Applicant must specify the subject matter of its “phonographic records.” Applicant must specify that its goods are cinematographic film OR that its goods are cinematographic films featuring a specific subject matter. Applicant must specify that its “slide films” are exposed. Applicant must specify that its “downloadable images files” are digital media and also specify the subject matter. Applicant must specify types of entertainment content on its video discs and video tapes and in its electronic publications. Applicant must specify that the nature of the “entertainment, information and educational content” that its discs, and memory cards feature. The wording “educational instruction, entertainment instruction and informational instruction, all pertaining to games, puzzles, physical fitness, diet, nutrition, sports, and exercise” is indefinite because it could include goods or services in several classes. As worded, it could describe educational services in Class 42. See suggested wording below. Applicant must specify types of discs and the subject matter that such discs feature. See TMEP §1402.01.
Applicant must delete the following duplicative language: “electronic circuits, magnetic discs, optical discs, ROM cards, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game computers;
Applicant may adopt the following identification of goods, if accurate:
Class 9: “Video game discs; computer programs for video games; electronic circuits, magnetic discs, optical discs, magnetic
computer tapes, ROM cards, CD-ROMs, DVD-ROMs and flash memory cards all storing and featuring programs for video game
machines; Player-operated electronic controllers, joysticks and memory cards for video game machines and their parts and fittings therefor;
microphones for video game machines; sound receivers for video game machines; parts and fittings for video game machines, namely, {specify such parts and fittings, e.g., electronic
cables}; video game computers; electronic circuits, magnetic discs, optical discs, ROM cards, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game
computers; downloadable programs for video game computers; programs for video game computers; electronic game programs for cellular phones; other electronic machines,
apparatus and their parts, namely, electronic game software, electronic video game machines for use with computer monitor or television; microphones; headsets with microphones for
use with computers; cellular phones; straps for cellular phones; parts and fittings for cellular phones, namely, {specify such parts and fittings, e.g., carrying cases, covers,
etc.}; other telecommunication machines and apparatus, namely, {specify types of telecommunication machines and apparatus, e.g., internet phones, digital phones, etc.};
recorded compact discs featuring entertainment content, namely music, stories, games and game hints; phonographic records featuring {indicate subject matter, e.g., music};
electronic circuits and CD-ROMs with recorded automatic performance programs for electronic musical instruments; downloadable musical sound recordings; cinematographic film;
cinematographic films featuring {indicate subject matter}; exposed slide films; slide film mounts; Digital media, namely,
downloadable image files featuring {indicate subject matter, e.g., graphics, etc.}; recorded video discs and video tapes featuring children's entertainment content, namely, {specify types of entertainment content, e.g., music, games, etc.}; downloadable electronic publications namely, commentary articles, game strategy guides, stories and games
featuring entertainment content, namely, {specify types of entertainment content, e.g., games, etc.}; compact discs, optical discs and memory cards
featuring entertainment, informational and educational content, namely, {specify content, e.g., music, games, etc.}; educational software featuring
instruction in games, puzzles, physical fitness, diet, nutrition, sports, and exercise; computer game discs, computer game memory cards; computer game programs; computer game software; electronic
video game and computer game discs; electronic game memory cards; electronic game programs; electronic game software; electronic interactive board games; interactive computer game and video game discs; interactive game memory cards; interactive video game programs; interactive game software; and {specify types
of discs, e.g., audio, laser, optical, compact, etc.} discs featuring {indicate subject matter, e.g., computer game programs, etc.}; musical sound recordings; video game
discs; video game memory cards; video game programs; video game software; magnetic trading cards and discs featuring game program and data content.”
See TMEP §1402.01.
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.
Disclaimer
No claim is made to the exclusive right to use “SPORTS” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.
Application Pursuant to Section 1(b) and 44(d) – Inquiry Required Before Suspension
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must provide a written statement to that effect. In addition, (i) 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 must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04.; or
(2) If applicant intends to rely solely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must submit a written statement that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04. Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §§1103, 1104.
Certification of Registration Required – Section 44(e)
The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration. An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must submit a copy of the foreign registration from applicant’s country of origin. If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b).
A copy of a foreign registration must consist of a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
/Jennifer M. Hetu/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4858
Fax: (571) 273-9108
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.
