Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/159777

 

This letter responds to the applicant’s communication filed on August 8, 2003.  The applicant amended the identification of goods.  The identification remains indefinite.  The requirement for a definite identification is maintained and made FINAL.

 

IDENTIFICATION OF GOODS UNACCEPTABLE FINAL

In the first Office Action, the applicant was advised that the identification of goods set forth in the application as filed is.  Accordingly, the applicant was required to submit an acceptable amended identification of goods and to state the proper classification of the goods selected. 

 

In response to this requirement, the applicant has amended the identification as follows:

 

Pre-recorded audio cassettes and compact discs featuring music, stories, games and activities; pre-recorded video cassettes; laser video discs; digital video discs and digital versatile discs featuring movies, music, games and animated entertainment; CD-ROM discs, computer game programs and computer software featuring learning activities, games, and entertainment; motion picture films; eyeglasses and sunglasses; consumer electronic goods, namely, portable compact disc players, portable digital compact disc players, portable solid state digital devices, TV/DVD combination devices, TV/VCR combination devices, TV/DVD/VCR combination devices, DVD players, VCR recorder/players, DVD/VCR combination players, television sets, desktop personal computers, portable personal computers, convergent TV/PC units, handheld computers, 2-way pagers, portable radios, walkie-talkies, cordless telephones, telephones, still cameras, video cameras, non-tethered still digital cameras, non-tethered video cameras, video game consoles, in International Class 9. 

 

The identification of goods is unacceptable as indefinite.

 

Pre-recorded audio cassettes and compact discs featuring music, stories, games and actives must specify the type of games and activities with more particularity.

 

Pre-recorded video cassettes; laser video discs; motion picture films must specify the subject matter of the goods.  The term “entertainment” is not an acceptable type of subject matter because the specific type of entertainment has not been stated.

 

Digital video discs and digital versatile discs featuring movies must specify the field of the movies.  The applicant must specify the type of games and animated entertainment. 

 

Learning activities and entertainment is not a sufficiently definite field for CD-ROM discs and computer software.  The applicant must describe the field with more particularity.

 

Portable solid state digital devices are not  recognizable goods.  The applicant should not use “devices” and should specify the goods by the common commercial names.  The applicant may amend to “portable solid state digital devices, namely, digital audio players, digital audio tape players, digital audio tape recorders, digital cameras, digital cellular phones, digital video disc drives.”

 

Slash marks should not be used in TV/DVD combination devices or in any other portion of the identification.  The applicant may substitute the word AND for the slash mark.  The applicant must also change “devices” to “machines.”

 

Convergent TV/PC units are not a recognizable good.

 

Two way pagers must be amended to include the word “radio” before pager.  The term 2 must be amended to “two.”

 

Video game consoles are not sufficiently specific.  The applicant must specify the type of electronic device used to play video games.  The applicant may amend to “video output game machines for use with televisions” or “video game machines for use with televisions” or “stand alone video game machines.”

 

Still cameras must be amended to specify the type of camera.  The applicant may amend to “still 35mm cameras.”

 

As stated in TMEP Section 1402.01:

 

The Trademark Act requires a written application "specifying" the goods or services on or in connection with which an applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(1)(A) and 1051(b)(1)(A).  To "specify" means to name in an explicit manner.  Additionally, Trademark Rule 2.33(a)(1)(v), 37 C.F.R. §2.33(a)(1)(v), requires that the application specify the "particular" goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark.  The identification of goods or services should set forth common names, using terminology which is generally understood.  For those products or services which may not have common names, language which is as clear and succinct as possible should be used.  Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.

 

The identification of goods or services should be clear, accurate and as concise as possible.  See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).  Furthermore, the identification of goods and services must be specific and definite.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).

 

 

(emphasis added.)[1] The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules.  When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification.  However, it is the applicant's duty and prerogative to identify the goods and services.   TMEP Section 1402.01(d).

 

The applicant is again advised that the Trademark Office Manual of Acceptable Identifications of Goods and Services, which includes the correct classifications of the listed goods and services, may be found online at http://www.uspto.gov.  The applicant may find this resource to be quite useful in framing an amended and acceptable identification of goods.   The applicant may adopt the following identification of goods, if accurate:

 

Pre-recorded audio cassettes and compact discs featuring music, stories, VIDEO games and CHILDREN’S ACTIVITY BOOKS; pre-recorded video cassettes FEATURING CLASSICAL MUSIC; laser video discs FEATURING CLASSICAL MUSIC; digital video discs and digital versatile discs featuring FAMILY ADVENTURE movies WITH ANIMATED CARTOONS, music, VIDEO games and animated entertainment IN THE NATURE OF ADVENTURE MOTION PICTURE FILMS; CD-ROM discs, computer game programs and computer software featuring learning activities IN THE NATURE OF CROSSWORD PUZZLES, VIDEO games, and entertainment IN THE NATURE OF MAGIC TRICKS; motion picture films IN THE FIELD OF MYSTERIES; eyeglasses and sunglasses; consumer electronic goods, namely, portable compact disc players, portable digital compact disc players, PORTABLE SOLID STATE DIGITAL DEVICES, NAMELY, DIGITAL AUDIO PLAYERS, DIGITAL AUDIO TAPE PLAYERS, DIGITAL AUDIO TAPE RECORDERS, DIGITAL CAMERAS, DIGITAL CELLULAR PHONES, DIGITAL VIDEO DISC DRIVES; TV AND DVD combination MACHINES, TV AND VCR combination MACHINES, TV AND DVD AND VCR combination MACHINES, DVD players, VCR recorder AND players, DVD AND VCR combination players, television sets, desktop personal computers, portable personal computers, convergent TV/PC units, handheld computers, TWO-way RADIO pagers, portable radios, walkie-talkies, cordless telephones, telephones, still 35MM cameras, video cameras, non-tethered still digital cameras, non-tethered video cameras, video game consoles, namely, stand alone video game machines, in International Class 9.

 

In addition, the applicant is again advised that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods set forth in the present identification.  In addition, once an item has been deleted from an identification of goods or recitation of services, it normally cannot be reinserted.

 

In any event, the requirement for an affirmative statement of an acceptable identification of goods, and the correct classification of the same, is continued and is made FINAL.

 

 

APPLICANT'S OPTIONS

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

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

 

 

 

 

 

/Tanya L. Amos/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 Ext. 135 Phone

(703) 746-6485 Fax

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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