UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79216960
MARK: CHUMBA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: VGW Holdings Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1366118
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods and services in the application:
Class 9: Computer software, including computer software for gaming purposes and on-line gaming; parts and accessories for gaming machines in this class, being software modules, storage media and components and erasable programmable read-only memory (eprom) chips; magnetic data carriers, recording discs; telecommunication apparatus and accessories therefor; storage media including compact discs, digital versatile discs; electronic systems for linking gaming and poker machines; virtual reality game hardware; parts, accessories and peripheral devices in this class for the aforesaid goods
Class 28: Gaming machines comprising of software modules and components including game symbols, mathematics, sound effects and other configurable items embedded in erasable programmable read-only memory (eprom) chips or other storage media; poker machines; parts, accessories and peripheral devices in this class for the aforesaid goods
Class 35: Provision of management reports, including reports on gaming services; business services in relation to gaming machine performance; incentive programs, including incentive programs for conducting and participating in gaming, systems including gaming systems; retail services, including retail services by direct solicitation by sales agents in the field of gaming; business services being the provision of data analysis including gaming data analysis; data analysis, market analysis and reporting data relation to business performance of gaming machines, gaming activity and gaming systems
Class 36: Financial services including financial services in relation to gaming systems and gaming machines; financial services for tracking gaming machine activity; financial reports, being reports on gaming services
Class 38: The provision of telecommunication links and services in relation to the operation of gaming machines
Class 41: Entertainment services including entertainment services in respect of gaming; entertainment services in the form of television programmes and offered via videos, digital versatile discs, compact discs; gaming services in relation to the provision of virtual reality game; gaming services in relation to the operation of bonus payout systems involving the playing of gaming machines including the playing of gaming machines via a global computer network; provision of online gaming facilities; provision of advisory, information and consultancy services in relation to the aforementioned services
Class 42: Computer technical management services being the services of a licensed monitor operator in relation to monitoring and testing gaming machines; computer support services for monitoring, tracking, testing, maintenance and service of game machines; technical support services for computer systems for monitoring, tracking testing, maintenance and service of gaming machines; design of gaming facilities
See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
SEARCH OF OFFICE’S DATABASE OF 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 AND SERVICES
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
In addition, the wording “including” in the identification of goods and services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods or services. See TMEP §1402.03(a).
In Class 9, applicant must indicate the functionality of its computer software and, if applicable, the field of use. Further, applicant must indicate its various forms of media are sold blank or sold with pre-recorded content. If the latter is true, applicant must indicate the subject matter of the content. The identification for “electronic systems for linking gaming and poker machines” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d). Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system, and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).
In Class 28, the wording “gaming machines comprising of software modules and components including game symbols, mathematics, sound effects and other configurable items embedded in erasable programmable read-only memory (eprom) chips or other storage media” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass various software and electronic goods properly classified in Class 9.
In Class 36, applicant must indicate specific financial services by the common commercial name of the service(s).
In Class 41, the wording “… television programmes and offered via videos, digital versatile discs, compact discs” in the identification of services must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass the sale of these television shows in physical media form, which are goods properly classified in Class 9.
In Class 38, the wording “The provision of telecommunication links and services in relation to the operation of gaming machines” is indefinite and must be clarified to indicate a specific service by the common commercial name of the service.
In Class 41, the wording “information and consultancy services in relation to the aforementioned services” is indefinite and must be clarified to indicate a specific service unless there is a definite service in Class 41. As there is not presently a definite service in Class 41, this clause does not have a subject matter and could there for be classified in any service class.
In Class 42, applicant must make clear that its monitoring is for proper functioning; security monitoring is a service classified in Class 45. Applicant must also indicate its specific design services.
Applicant may adopt the following identification, if accurate (changes in bold):
Class 9: Computer hardware; computer software, namely, computer software for gaming purposes and on-line gaming; parts and accessories for gaming machines in this class, namely, software modules for {indicate the function of the software e.g., operating gaming machines}, storage media and components in the nature of {indicate specific media and components e.g., blank magnetic data carriers} and erasable programmable read-only memory (eprom) chips, sold blank; magnetic data carriers, recording discs, all sold blank; apparatus for recording, transmission, reproduction or display of sound or images; headphones; telecommunication apparatus and accessories therefor, namely, {indicate specific apparatus e.g., modems}; storage media namely, compact discs, digital versatile discs, all sold blank; data processing equipment; electronic systems for linking gaming and poker machines primarily comprised of {indicate specific parts in Class 9 e.g., electrical controllers for operating gaming machines and operating system software}; virtual reality game software; virtual reality game hardware, namely, {indicate specific hardware items e.g., virtual reality headsets}; parts, accessories and peripheral devices in this class for the aforesaid goods, namely, {indicate specific goods e.g., computer peripherals}
Class 28: Gaming machines; gaming machines sold with software modules and components including game symbols, mathematics, sound effects and other configurable items embedded in erasable programmable read-only memory (eprom) chips or other storage media as integral components of the gaming machines; poker machines in the nature of gaming machines for playing poker; parts, accessories and peripheral devices in this class for the aforesaid goods, namely, {indicate specific goods e.g., gaming keypads}
Class 35: Business management, including business management of gaming systems and gaming machines; provision of management reports, namely, {indicate specific service e.g., preparation of business} reports on gaming services; business services in relation to gaming machine performance, namely, {indicate specific service(s) e.g., business administration services in relation to gaming machine performance}; advertising, promotion and marketing services, including business and commercial information and updates in relation to gaming and the gaming industry; incentive programs, namely, providing incentive award programs for customers for conducting and participating in gaming systems including gaming systems; retail services, namely, retail services by direct solicitation by sales agents in the field of gaming; business services being the provision of data analysis namely, business gaming data analysis; business data analysis, market analysis and reporting business data relation to business performance of gaming machines, gaming activity and gaming systems
Class 36: Financial services namely, financial services in the nature of {indicate specific financial services e.g., financial analysis} in relation to gaming systems and gaming machines; financial management of gaming systems and gaming machines; financial services for tracking gaming machine activity, namely, {indicate specific financial services e.g., financial analysis for tracking gaming machine activity}; financial management of club membership; financial management of marketing systems including in relation to gaming systems and gaming machines; financial management and analysis of computer based integrated management systems; financial reports, in the nature of {indicate specific service(s) e.g., preparing financial} reports on gaming services
Class 38: The provision of telecommunication links and services, namely, {indicate specific service(s) e.g., providing on-line communications links which transfer the web site user to other local and global web pages} in relation to the operation of gaming machines; providing access to an online computer network of gaming machines
Class 41: Entertainment services namely, entertainment services in the nature of {indicate specific service(s) e.g., casino} gaming; entertainment services in the form of {indicate a specific service properly classified in Class 41 e.g., production of} television programmes that are distributed via videos, digital versatile discs, compact discs; gaming services in relation to the provision of virtual reality game, namely, {indicate specific service(s) properly classified in Class 41 e.g., virtual reality game services provided on-line from a computer network}; gaming services in the nature of {indicate specific gaming services in Class 41 e.g., providing online poker games} featuring bonus payout systems involving the playing of gaming machines including the playing of gaming machines via a global computer network; provision of online gaming facilities, namely, {indicate specific service(s) properly classified in Class 41 e.g., virtual reality game services provided on-line from a computer network}; provision of advisory, information and consultancy services in relation to the aforementioned services, namely, {indicate specific service e.g., consulting in the field of casino gaming, consulting in the field of live clown shows}
Class 42: Design, development, installation and maintenance of computer software; computer systems design and analysis; installation and maintenance of software for computer systems; computer technical management services being the services of a licensed monitor operator in the nature of monitoring and testing gaming machines to ensure proper functioning; computer support services for monitoring, tracking, testing, maintenance and service of game machines to ensure proper functioning; technical support services for computer systems for monitoring, tracking testing, maintenance and service of gaming machines to ensure proper functioning; {indicate the specific type of design e.g., interior} design of gaming facilities
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of an attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
ASSISTANCE
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the goods and services identified above, in the beginning of this Office action, will be deleted from the application.
In such case, the application will then proceed only with the following goods and services:
Class 9: Computer hardware; apparatus for recording, transmission, reproduction or display of sound or images; headphones; data processing equipment; virtual reality game software
Class 28: Gaming machines
Class 35: Business management, including business management of gaming systems and gaming machines; advertising, promotion and marketing services, including business and commercial information and updates in relation to gaming and the gaming industry
Class 36: Financial management of gaming systems and gaming machines; financial management of club membership; financial management of marketing systems including in relation to gaming systems and gaming machines; financial management and analysis of computer based integrated management systems
Class 38: Providing access to an online computer network of gaming machines
Class 42: Design, development, installation and maintenance of computer software; computer systems design and analysis; installation and maintenance of software for computer systems
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Michael Eisnach/
Examining Attorney
Law Office 104
(571) 272-2592
Michael.Eisnach@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 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 TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.