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. 79224588
MARK: J K ROWLING
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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: Joanne Rowling
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1383807
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL 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 full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
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.
PRIOR PENDING APPLICATIONS ADVISORY
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note that, by default, a particular individual is not considered to be the same entity as joint owners, even if the individual is one of the joint owners. See TMEP §803.03.
CONSENT REQUIREMENT
To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”).
However, if the name in the mark does identify a particular living individual, applicant must submit both of the following:
(1) The following statement: “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.” If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement: “J K ROWLING identifies {specify name, e.g., Joanne Rowling}, a living individual whose consent is of record.”
(2) A written consent, personally signed by the named individual(s), as follows: “I, {specify name, e.g., Joanne Rowling}, consent to the use and registration of my {specify if pen name, stage name, pseudonym or nickname}, J K ROWLING, as a trademark and/or service mark with the USPTO.”
For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
IDENTIFICATION OF GOODS AND SERVICES
For example, “painting sets” is overly broad as it includes painting sets for artists in class 2, and painting sets for children in class 16.Further, the wording “clothing” is too broad and must be clarified to indicate the particular type(s0 of clothing. See below.
Similarly, the word “headgear” in the identification of goods must be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). This word is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although headgear may be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, 26, and 28), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Applicant may (1) amend “headgear” to “headwear,” and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items in that class (e.g., headgear, namely, sports caps and hats, for International Class 25).
Further, applicant has included the term “and/or” or “or” in the identification of goods and services. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it cannot be determined whether applicant intends to use the mark on all the identified goods and services.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in the same class(es) specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording, if accurate:
Class 9: Motion picture films featuring comedy, drama, action, adventure and/or animation, and
motion picture films for broadcast on television featuring comedy, drama, action, adventure and/or animation; audio video discs, and digital versatile discs featuring
music, comedy, drama, action, adventure, and/or animation; downloadable audio recordings featuring comedy, drama, action and adventure; downloadable audio-video recordings
featuring comedy, drama, action and adventure and/or animation; apparatus
for processing, recording, transmission or reproduction of sound, video, data and/or images, namely, {list specific types of apparatus, e.g., CD players, audio
cassette players, etc.}; mouse pads; eyeglasses, sunglasses and cases therefor therefore; downloadable computer software applications
for {specify the function, and indicate the content or field of use, if the goods are content- or field-specific, e.g., watching movies, reading
children’s books}; downloadable software for use in playing online computer games; downloadable computer game software; computer game software for use on mobile and
cellular phones; video game software and computer game programs; video game cartridges; computer and video game discs and cartridges; downloadable programs
and software applications for {specify function, and indicate the content or field of use, if the goods are content- or field-specific, e.g., watching movies, reading children’s books}, which are designed for hardware platforms, namely, game consoles and personal computers; computer game software for gaming machines
including slot machines; computer software or and firmware for games of chance on any computerized platform, including dedicated gaming consoles,
video based slot machines, reel based slot machines and video lottery terminals; computer software for linking digitized video and audio media to a global computer information
network; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer
software for streaming audio-visual media content via the internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with
multimedia and interactive functions; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment-related audio, video,
text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the
Internet; downloadable computer software for streaming audio-visual media content via the Internet; downloadable computer software for streaming and storing audio-visual media content; downloadable
publications in the nature of books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, strategy guides
and magazines featuring characters from animated, action adventure, comedy and/or drama features, colouring books, children's activity books and
magazines in the field of entertainment; cellular telephone accessories, namely, hands-free accessories {specify the nature of the goods in class 9, e.g., kits}, cellular
telephone covers and cellular telephone face covers; encoded magnetic cards, namely, {further specify the nature of the goods in class 9, e.g., pre-paid} phone cards, credit
cards, cash cards, debit cards and magnetic key cards; downloadable electronic books, magazines, and newspapers in the field of {specify field, e.g., fiction, drama, comedy, music}; downloadable children's books; downloadable audio books in the nature of {indicate the type of books, e.g., short stories, novels, OR- indicate the subject matters, e.g., audio books in the field of science}; downloadable
interactive electronic publications in the nature of {state type of publication, interactive magazines, newsletters} in the field of {specify field, e.g., children’s bedtime stories}; {specify whether the goods are downloadable or recorded, and, if recorded, the media type, e.g., downloadable} interactive
electronic books in the field of {specify field, e.g., action heroes} and {specify whether the goods are downloadable or recorded, and, if
recorded, the media type, e.g., downloadable} interactive electronic children's books; decorative magnets
Class 16: Printed matter, namely, {specify the particular type(s) of goods in class 16, e.g., books, manuals,
curricula, newsletters}, newspapers, periodical publications all in the field of {specify subject matter, e.g., music}; books in the field of {specify
field, e.g., music}; colouring books; stationery; comic books, children's books; magazines featuring characters from animated, action adventure, comedy and/or drama
features; children's activity books; stationery writing paper; envelopes; notebooks; diaries; note cards; greeting cards; trading cards; lithographs; pens, pencils,
and cases therefor; erasers; crayons; markers; coloured pencils; painting sets {further specify the nature of the goods in class 16, e.g., for children};
chalk and chalkboards; decals, heat transfer paper; posters; mounted and/or unmounted photographs; book covers; book marks;
calendars; gift wrapping paper; paper party decorations, namely, paper napkins, paper place mats, crepe paper, printed invitations, paper table cloths, paper cake
decorations; printed transfers for embroidery or fabric appliqués; printed patterns for making clothes in the nature of costumes, pyjamas, sweatshirts and
t-shirts.
Class 25: Clothing, namely, T-shirts, sweatshirts, shirts, trousers, shorts, skirts, blouses, dresses, jackets, coats, sleepwear, underwear, swimwear, jumpers, hats, caps being headwear, baseball caps, headbands; footwear; headgear in the nature of headwear; scarves, woolly hats and gloves; shoes, training shoes, sandals, boots and slippers; belts for wear.
Class 28: Games, toys and playthings, namely, {list specific goods in International Class 28, e.g., board games, card games}; video game apparatus, namely, {list specific type of apparatus in International Class 28, e.g., video game}; {further specify the nature of the goods, e.g., video} games consoles; controllers for games consoles; gymnastic and sporting articles, namely, {list specific gymnastic and sporting articles in class 28, e.g., gymnastic benches, gymnastic horizontal bars, springboards for gymnastics, balls for sports}; playing cards; board games; card games; hand-held units for playing electronic games; decorations for Christmas trees; jigsaw puzzles and other manipulative puzzles
Class 45: Intellectual property licensing services; management of intellectual property rights, namely, {specify the particular services in class 45 by common commercial name, e.g., licensing of intellectual property}; online social networking services; online social networking services, namely, social networking services provided via the internet and other electronic communications networks; online social networking services provided via a website on the internet; Internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials
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.
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 718.01, 718.02.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
ASSISTANCE
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL 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.
/Jonathan Ryan O'Rourke/
Examining Attorney
Law Office 104
571-270-1561
jonathan.orourke@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.