UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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:

 

INTERNATIONAL REGISTRATION NO. 1034779

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney.  See 37 C.F.R. §2.193(e)(2)(ii).  Otherwise, applicant’s authorized attorney must respond on applicant’s behalf.  See 37 C.F.R. §2.193(e)(2)(i).  However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:

 

(1)  Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)  Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.

 

Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b).  That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things.  See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01.  If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action.  See 37 C.F.R. §2.193(e)(2)(ii).

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search for Conflicting Marks

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Identification of Goods

 

The wording “apparatus for recording, transmitting, reproducing sound and/or images” and “calculating machines, data processing equipment and computers” is acceptable as is. 

 

The wording “Scientific, electric, photographic, cinematographic, optical and teaching apparatus and instruments” in the identification of goods is indefinite and must be clarified because the applicant must identify the common commercial name of each type of apparatus. 

 

The wording “magnetic, digital, electronic and analog data media, sound recording and audiovisual disks” is indefinite because the applicant must identify the common commercial name of the media and the subject matter of what is recorded on the media, e.g. digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring _______________ {indicate subject matter}.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

The examining attorney suggests the following identification, if accurate:

 

Scientific, electric, photographic, cinematographic, optical and teaching apparatus and instruments, namely, _________________ (specify the common commercial name of each apparatus); apparatus for recording, transmitting, reproducing sound and/or images; digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring ___________________ {indicate subject matter, e.g. children’s entertainment}; calculating machines, data processing equipment and computers.

 

Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.  In addition, for applications filed under Trademark Act Section 66(a), amendments to the identification are limited to goods and/or services in the international class(es) designated in the application as filed.  37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c). 

 

Thus, applicant can only amend the identification to include goods and/or services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.

 

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 Required

 

Applicant must disclaim the descriptive wording “RACING” apart from the mark as shown because it merely describes a feature of the goods.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  The examining attorney bases this requirement on a search of Google® in which the applicant’s web site indicates the applicant provides video/computer games featuring racing.  See attached.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “RACING” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

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).

 

Color Claim and Color Description

 

Applicant has submitted a color drawing and provided a color claim, but has not provided a mark description of the literal and design elements that specifies where all the colors appear in those elements.  Applications for marks depicted in color must include a description of all the literal and design elements in the mark that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).

 

Therefore, applicant must provide a description of the literal and design elements in the mark that specifies where all the colors appear in those elements.  The following description is suggested, if accurate: 

 

The mark consists of the white letting POCOYO, with each individual letter in a colored box, i.e. P in a fuchsia box, O in a blue box, C in a green box, O in a lilac box, Y in an orange box, O in a yellow box with all the boxes surrounded by a white background with faint black shadowing.  Below POCOYO is the wording RACING in blue with a white outlining and faint black shadowing.  Above and partially behind the wording POCOYO is a black and white checkered flag.

 

TMEP §807.07(a)(ii).

 

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

 

 

 

/Amy E. Hella/

Trademark Examining Attorney

Law Office 110

U.S. Patent & Trademark Office

571-272-9171

 

 

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.