Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/8/2010

 

THIS IS A FINAL ACTION.

 

 

This Office action is in response to applicant’s communication filed on June 1, 2010. Applicant’s new drawing and amendment of its Class 9 goods and Class 41 services is accepted and entered into the record.

 

However, the following requirements are now made FINAL:  1) identification of Class 28 goods; 2) mark description.  See37 C.F.R. §2.64(a).

 

In addition to the above-referenced final requirements which are set forth below, applicant should note the following advisory regarding a potential refusal of registration.

 

Advisory: Mark Appears to Identify a Character

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for design mark, as used on the specimen of record, serves to identify only a particular character and as such, does not function as a trademark or service mark to identify and distinguish applicant’s goods and/or services from those of others and to indicate the source of applicant’s goods and/or services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Hechinger Inv. Co. of Del., 24 USPQ2d 1053, 1056 (TTAB 1991); In re Frederick Warne & Co., 218 USPQ 345, 348 (TTAB 1983); TMEP §§904.07(b), 1202.10, 1301.02(b).

 

A design of a character is registrable as a trademark or service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying and distinguishing the goods and/or services in addition to identifying the character.  In re Hechinger, 24 USPQ2d at 1056; TMEP §§1202.10, 1301.02(b); see In re Frederick Warne, 218 USPQ at 348. 

Applicant must respond to the final requirement(s) set forth below.

Identification of Goods Requirement Continued and Made FINAL

The wording “doll props” in identification of Class 28 goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

For the applicant’s convenience, the trademark examining attorney suggests an amendment of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with any material additions and deletions highlighted in bold and italicized type. Applicant may adopt the following identification, if accurate: 

 

International Class 009:  “Video game software, computer game programs and motion picture films about a caveman character "JUMA" and an alien character 'TING"

 

International Class 028:  “Toys, namely, toy vehicles, toy action figures and accessories for use therewith; dolls, doll clothing and doll accessories, namely, [specify common commercial name of “doll props”, e.g., doll wigs] and doll cases; children's and infants' multiple activity toys; plush toys; stuffed toys; plastic and vinyl toy characters and toy animals; toy figures; puzzles; board, parlor, action skill, card and role-playing games; toy sporting equipment, namely, footballs, baseballs, soccer balls, basketballs and volley balls ”

 

International Class 041:  “Entertainment services, namely, creation and production of animated, live action, short and long motion picture films and television shows; distribution of animated, live action, short and long motion picture films and television shows via cable, television broadcasts, video media, audio media in the nature of compact disc, satellite, Internet and wireless communications ”

 

An applicant may amend an identification of goods only 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 et seq. 

 

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.

 

Accurate Mark Description Requirement Continued and Made FINAL

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of an alien robot with its right appendage raised in a wave greeting and the wording “TING” at the lower right hand corner.

 

Proper Response to FINAL Action Required

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  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).

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

/Julie Thomas Veppumthara/

Examining Attorney

Law Office 107

Phone: 571-272-1582

Email: julie.veppumthara@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77910118) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 7/8/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77910118&doc_type=OOA&mail_date=20100708 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 7/8/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.