Examiners Amendment

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

EXAMINER’S AMENDMENT

 

ISSUE/MAILING DATE: 6/3/2016

INTERNATIONAL REGISTRATION NO. 1241396

 

PARTIAL ABANDONMENT – APPLICATION HAS BEEN AMENDED

 

The above-referenced application is abandoned in part because applicant failed to file a response to the final Office action dated November 4, 2015.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a). Specifically, registration was refused under Trademark Act Section 2(d), 15 U.S.C. 1052(d), on the ground that use of the applied-for mark in connection with the following goods and services would likely lead to confusion with the marks in U.S. Registration Nos. 3322354, 3689149, 3826902, 3823082, and 3927290:

 

• International Class 9: “earphones; headphones; virtual reality headsets and helmets for use in playing video games; walkie-talkies; microphones”;

 

• International Class 20 “… beds; book shelves; chairs …; cradles; cupboards … cushions; desks; dressing tables; easy chairs; … furniture; wardrobes for covering and storing garments; high chairs for babies; …  playpens for babies…”;

 

• International Class 28: “… balls for games; … protective padding for playing sports, namely, skateboarding, in line skating, baseball, basketball, BMX bicycle motocross, field hockey, football, hockey, inline skating, lacrosse, martial arts, motocross, mountain biking, ski, snowboard, softball, volleyball; … roller skates; … sailboards; … skateboards; skating boots with skates attached; … skis; snow boards; … surf boards”;

 

• International Class 35: “Wholesaling and retailing services relating to the sale of … sporting articles, namely, sports shoes, sports drinks, sports apparel, sports goggles, sports equipment, sport caps and hats, sports helmets, rings for sports, rackets, ski equipment, weights, hiking gear, bicycles, cycling equipment, snowboarding, surfs, sails, wind surfs, balls, swimming equipment, diving equipment, equipment for martial arts, cricket equipment, riding equipment and golf equipment … ; advertising; marketing services; organization of exhibitions for commercial or advertising purposes; publication of publicity texts; sales promotion; advertising agencies; . . . marketing services; outdoor advertising; personnel recruitment; publicity agencies; radio advertising; television advertising; on-line advertising on a computer network; . . . rental of advertising time on communication media; . . . production of television commercials; rental of advertising space”; and

 

• International Class 41: “… animation film and video production services; distribution of radio programs for others; distribution of television programs for others; … entertainment services, namely, production of entertainment television shows and interactive television programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means; … entertainment services, namely, the provision of continuing entertainment and news programs featuring entertainment information delivered by computer networks; … entertainment services, namely, providing non-downloadable musical performances, musical videos, related film clips, photographs and other multimedia entertainment materials featuring animated cartoon characters via a web site; … entertainment, namely, a continuing entertainment animated cartoon show broadcasted over global and local area computer networks; … production and provision of entertainment and news via communication and computer networks, namely, production and distribution of entertainment and news television programs for other, multimedia production services; production of audio, video, and multimedia recordings; production of radio and television programs; production of sound recordings; production, and distribution of motion pictures and rental of motion picture films; … video production services; video film production; video recording services.”

 

To avoid partial abandonment, a response or notice of appeal was due within six months from the date on which the USPTO sent the previous Office action; however, no response or notice of appeal was received within this time period.  See TMEP §715.01. Consequently, these goods and services are now considered abandoned and are deleted from the application. See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)(1); TMEP §718.02(a). 

 

The application will proceed with the following International Class 9, 20, 28, 35, and 41 identifications: 

 

Class 9: Application development tool computer programs for personal computers, mobile digital electronic devices, hand held computers, and mobile telephones; carrying cases for cell phones, telephones, pagers and mobile computers; computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless point of sale devices; computer game software featuring character recognition, voice recognition, touch sensitivity, light sensitivity, gravity sensitivity; computer game software for electronic computer apparatus featuring interactive and multimedia functions that enable the user to integrate text, audio, graphics, still images and moving pictures; computer game software; decorative magnets; digital media, namely, CDs, DVDs, memory cards, and downloadable audio, video, and multimedia files, featuring music, motion picture and animated cartoon characters; digital memory devices, namely, blank CDs and DVDs, audio/video discs featuring video games, blank minidiscs, USB flash drives, blank flash memory cards; downloadable computer game software for playing video, computer and on-line games; downloadable ring tones, music, videos, and electronic games, via the internet and wireless devices; downloadable software for developing, designing, modifying, recording and customizing sound and speech; downloadable software for developing, designing, modifying, recording and customizing video, computer and on-line games; downloadable video game software featuring touch and voice control; eyewear cases; eyewear; interactive multimedia computer game software programs; mouse pads; software for enabling video computer and on-line games to be run on multiple platforms; speech recognition software; touch and voice driven interactive video game software; loudspeakers; handheld computers; mobile phones

 

Class 20: Bamboo blinds; boxes of wood or plastic; corks; curtain hooks; curtain rails; curtain rings; curtain rods; curtain tie-backs in the nature of non-textile curtain holders; figurines and statuettes made of plaster, plastic, wax and wood; fireplace screens for domestic use; mirrors; non-metal baskets, namely, baskets for transporting goods for commercial purposes, fishing baskets for industrial purposes, non-metal bed fittings; non-metal clothes hooks; photograph frames; picture frames; pillows; sleeping bags; statues of wood, wax, plaster and plastic; toy boxes; wind chimes; works of art and ornaments made of plaster, plastic, wax and wood

 

Class 28: Action figure toys; arcade games; arcade-type electronic video games; articles of clothing for toys; balloons; bath toys; battery operated action toys; board games; sleds; bubble making wand and solution sets; card games; Christmas tree ornaments and decorations; dolls designed to resemble computer game characters; dolls responding to signals from other electronic devices; plush toys designed to resemble computer game characters; plastic character toys designed to resemble computer game characters; plush toys responding to signals from other electronic devices; electronic novelty toys, namely, toys that electronically record, play back, and distort or manipulate voices and sounds; gambling machines; game controllers for computer games; ice skates; infant toys; inflatable toys; in-line roller skates; interactive hand-held audio-visual games with displays not for use with television receivers; kite reels; kites; mechanical toys; musical toys; parlor games; party favors in the nature of small toys; party games; pinball games; plastic character toys; plush toys; puppets; rubber character toys; sandbox toys; action skill games; squeeze toys; stand-alone video output game machines; swings; tabletop games; talking dolls; talking toys; toy masks; toy snow globes; toy vehicles; water toys; wind-up toys; stand-alone video game machines for use with external display screens or monitors; building blocks toys; body boards; chess games; apparatus for games, namely, basses, bates and balls for playing indoor and outdoor games; electronic toys; electronic learning toys; battery operated toys; puzzles; plastic character toys; electronic remote controlled toys, namely, cars, race cars, airplanes and boats

 

Class 35: Wholesaling and retailing store services relating to the sale of party favours, namely, plastic and paper jewelry, plastic toys, paper hats, paper and plastic whistles and magic sets, festive decorations and ornaments, namely, products for decorating rooms, clothing, jewelry and paper, soaps, perfumery, essential oils, cosmetics, hair lotions, hair care products, toiletries, dentifrices, personal hygiene products, cleaning, polishing and abrasive preparations, substances for laundry use, manicure tools, nail care preparations, nail polish, false nails, dietetic substances, food for babies, sanitary preparations, candles, wicks, spills for lighting, greases, lubricants, oils for paints, cutlery, crockery, manicure sets, shaving instruments, razors, machines and machine tools for kitchen or household purposes, namely, dishwashers, washing machines, cooker hoods, kitchen stoves and mixers, hand-held tools, films, cameras, photo discs, video recorders, audio and visual products, audio and video tapes, records and discs, instruments and apparatus for the recording, transmitting and/or reproduction of sounds and/or images, televisions, cassette tape players and/or recorders, video cassette and/or disc players and/or recorders, radios, telephones, wireless phones, mobile phones, mobile phone cases, decorations and straps for phones, call indicators, calculating machines, calculators, electronic and computer games, cinematographic films, lights, fans, cooking utensils, cake and pastry moulds, toasters, ovens, kitchen utensils, namely, juice squeezers, blenders, cutters, scales, pans, dishes, cutlery, plates, cups, glasses and bowls, utensils and containers for serving or storing food and/or beverages, chop sticks, cutting instruments, porcelain, chinaware, crystalware, enamelware, silverware, glassware, terra-cottaware, earthenware, ceramics, hair dryers, lamps, lamp shades and parts and fittings therefor, baby carriages, balloons, bicycle horns, clocks and watches and accessories and parts and fittings therefor, jewellery and imitation jewellery, ornaments, goods in precious metal or coated therewith, namely, jewelry, watches, clocks, sculptures and boxes, music boxes, musical instruments, pictures, photographs, stationery, paper and cardboard and goods made from these materials, namely, containers, boxes, bags, posters, towels and handkerchiefs, artists materials, paint brushes, writing instruments, printed matter, books, newspapers, magazines and periodicals, greeting and Christmas cards, playing cards, packing and packaging materials, picture frames and stands, adhesives for stationery or household purposes, goods made of leather and/or imitations of leather, namely, bags, wallets, clothes, shoes, riding equipment and furniture, bags and luggage, purses and wallets, umbrellas, walking sticks, furniture, mirrors, coat hangers and pegs, boxes and containers, name plates, containers, combs, sponges, brushes, articles for cleaning purposes, spectacles, spectacle frames and sunglasses and cases and accessories therefor, textile and textile goods, bedding, and table linens and covers, napkins, mats, furniture, haberdashery, handkerchiefs, articles of clothing, footwear and headgear, namely, products from clothing, footwear and headgear, namely, swimwear, jackets and waterproof jackets, rain wear, belts, underwear, nightwear, hats, caps, sun visors, socks, stockings, tights, masquerade costumes, jackets, knitwear, shirts, men's shirt, outerwear, shorts, dresses, skirts, coats, vests, sweaters, ties, scarves, sweatshirts, robes, bibs, clothing for children and infants, shoes, sports sneakers, slippers, shoes for the beach, covers and cuffs and buttons, badges, ribbons and braid, lace and embroidery, hair pins and ornaments, braces, shoe ornaments, hat ornaments, zipper and zipper fasteners, carpets, rugs and mats, toys, games and playthings, dolls, figurines, decorations for Christmas trees, food and beverages, confectionery, floral products, matches, cigars, cigarettes and smokers' articles; business management of performing artists; import-export agencies; compilation of information into computer databases; direct mail advertising; business management of hotels; procurement services for others, namely, purchasing clothing, fashion accessories, office supplies, furniture, and household goods for others; office machines and equipment rental; rental of vending machines

 

Class 41: Amusement park and theme park services; entertainment in the nature of competitions in the field of computer and video games; entertainment in the nature of live stage performances featuring animated characters; entertainment in the nature of theater productions; entertainment services, namely, providing online computer games and online video games that are accessible and playable via mobile and cellular phones and other wireless devices; entertainment services, namely, live, televised and movie appearances by a professional entertainer; entertainment services, namely, providing information in the field of music, video games, and animated cartoon characters via a web site; entertainment services, namely, providing on-line computer games; entertainment services, namely, providing touch and voice driven online computer games for digital mobile devices; multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; on-line gaming services, namely, providing on-line computer games; arranging or organizing of online multiplayer video game tournaments; providing non-downloadable audio and video files in the field of entertainment relating to interactive computer game software, interactive video game software and interactive computer and video games; game services provided online from a mobile phone network, namely, providing on-line computer games; providing news and information in the field of entertainment regarding interactive computer game software, interactive video game software and interactive computer and video games, via electronic, wireless and computer networks; providing non-downloadable video and audio recordings about animated cartoon characters made within computer games via a website; providing online computer and video games accessed and played via electronic, wireless and computer networks; rental of sound recordings

 

If applicant’s failure to respond was unintentional, applicant may file a petition to the Director to revive the portion of the application that abandoned.  37 C.F.R. §2.66(a); TMEP §§718.02(a), 1714.01(d).  The petition must be filed within two months of the date of issuance of this letter and may be filed online at http://www.gov.uspto.report/trademarks/teas/petition_forms.jsp.  See 37 C.F.R. §2.66(a)(1); TMEP §§718.02(a), 1714.01(a), (d).  A $100 fee for such a petition is required.  See 37 C.F.R. §2.6(a)(15).  If a petition is filed, applicant must immediately notify the Petitions Office at 571-272-8950 that a request to revive a partially-abandoned application was filed, indicating the application serial number.

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/3/2016 FOR U.S. APPLICATION SERIAL NO.79162812

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.