Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/635322

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Pending Application

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78572650.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Action on this application will be suspended pending the disposition of Application Serial No. 78572650 upon receipt of the applicant’s response resolving the following.

 

Section 1(b) and 44(d) – Basis for Application

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant's intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  If the applicant does so, the applicant may not subsequently rely on the foreign registration.  TMEP section 1006.01.

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit the certification or certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.

 

Foreign Application Not From Country of Origin

If applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, then applicant must provide evidence that Japan is a “country of origin,” i.e., that applicant has a bona fide and effective industrial or commercial establishment in Japan.  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02 and 1002.04.

 

The application record shows that applicant is domiciled in the United States, but the foreign application on which applicant relies for priority was filed in Japan.  To obtain a priority filing date under §44(d), the foreign application does not have to be filed in applicant’s country of origin.  However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which applicant relies for priority, applicant must establish that the country in which the application was filed is its country of origin, i.e., that applicant has a bona fide and effective industrial or commercial establishment in that country.

 

If applicant cannot establish that the country in which the foreign application was filed is the applicant’s country of origin, registration under §44(e) will be refused.  In such case, applicant may amend the application to rely on §1(a) or §1(b) as a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.  Where an applicant meets the requirements of §44(d) as of the filing date of the United States application, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §§2.35(b)(4); TMEP §806.04(b).

 

Please note that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under §44(d) must establish a basis for registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02 and 1003.03.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant has identified goods that fall into multiple classes and require further clarification.  The applicant may adopt one or more of the following identification, if accurate: 

 

Computer programs, namely, game software for use on computers and video game players; prerecorded videotapes, audio tapes, CDs and DVDs featuring sound and video in the fields of music, live action programs, motion pictures and animated cartoons; motion picture films featuring comedy, drama, action, adventure and animation; motion picture films for broadcast on television featuring comedy, drama, action, adventure and animation; and dust covers for computer game consoles and peripherals; electronic circuits and CD-ROMs on which programs for hand-held games with liquid crystal displays are recorded; electronic machines and instruments, namely, __________[please specify common commercial name] and parts and fittings therefore, in International Class 9.

 

Video game apparatus for personal use, namely, handheld unit for playing video games; arcade type electronic video game machines, in International Class 28.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and services.

 

http://tess2.gov.uspto.report/netahtml/tidm.html 

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Multiple Class Requirements

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 in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

/tkhl/

Tarah K. Hardy Ludlow

Trademark Attorney

Law Office 110

571-272-9361

571-273-9110 fax

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.