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. 79250934
MARK: PLAYSTATION
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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: Sony Interactive Entertainment Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1447464
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 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.
SUMMARY OF ISSUES:
The filing date of pending U.S. Application Serial No. 87080530 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
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 mark in the referenced application. 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.
IDENTIFICATION OF GOODS AND SERVICES
The wording as set forth below, in the identification of goods and services is indefinite and must be clarified as indicated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The identification of goods and/or services contains parenthetical language inserted by the International Bureau because the IB was not able to determine if the classification assigned to particular goods and/or services by an applicant’s Office of origin was correct. See TMEP §1904.02(c).
Specifically, applicant’s identification contains multiple parentheses surrounding clarifying language, e.g., (furniture), (seats,), etc.
This language is not part of the identification and will be removed. Id. It will not appear on any U.S. registration certificate that may issue. See id.
Applicant may substitute the following wording, if accurate:
International Class 011
Sockets for electric lights; LED flashlights; light-emitting diode (LED) luminaires; light-emitting diode (LED)
lighting installations; light-emitting diode (LED) light bulbs; LED safety lamps; light-emitting diodes (LED) lighting apparatus; LED light bulbs; arc lamps; carbon for arc lamps; motorcycle lights;
overhead lamps; off-road light bars for vehicles; flameless candles; klieg lights; electric lights for Christmas trees; chandeliers; lighting devices for showcases; spotlights; diving lights;
downlights; lighted disco balls; trailer lights for {specify the use, vehicles, etc.}; light panels{specify the use, vehicles, etc.}; halogen lamps; ultraviolet halogen metal vapor lamps; halogen
light bulbs; flat panel lighting apparatus; standard lamps; helmet safety lights; penlights; boat trailer lights; running lights for boats; electric track lighting units;
flameless light-emitting diode (LED) candles; safety lamps {specify the type, e.g., LED or use, e.g., for outdoor use}; accent lights for indoor use; electric flashlights; street lamps;
security lights {specify the type or use, e.g., for outdoor use}; germicidal lamps for purifying air; portable headlamps; LED landscape lights; fluorescent lamps; fluorescent lamp tubes; fiber optic
lighting apparatus, namely, {specify the lighting apparatus, e.g., lighting installations, etc.}; lighting apparatus, namely, {specify the lighting apparatus, e.g., lighting installations}
incorporating optical fibers; safety lamps for underground use; lighting installations for air vehicles; navigation safety lights for aircraft; high-intensity searchlights;
string lights for festive decoration; fairy lights for festive decoration; electric lighting fixtures; LED lighting fixtures; germicidal lamps; ultraviolet ray lamps, not for medical purposes; mobile
light towers; bicycle lights; bicycle lamps; dynamo lights for bicycles; directional lights for bicycles; headlights for automobiles; lights for automobiles {specify the type of light, e.g.,
cigarette light, etc.}; hand-held spotlights; fish-luring lights; lamps for festive decoration; electric holiday lights; compact fluorescent electric light bulbs (CFLs);
electric luminaires; filters for use with lighting apparatus; lighting fixtures; magnesium filaments for lighting; light shades; lighting apparatus, namely, {specify the type of
apparatus, e.g., lighting installations, etc.}; color filters for lighting apparatus; filters for lighting apparatus; light diffusers; luminous tubes for lighting; discharge tubes, electric, for
lighting; uplights; light bulbs for directional signals for vehicles; spot lights for use on vehicles; taillights for vehicles; map-reading lights for vehicles; vehicle brake lights; vehicle
headlights; lights for vehicles; lighting apparatus for vehicles; vehicle dynamo lamps; anti-dazzle devices for vehicles (lamp fittings); mercury-vapor lamps; aquarium lights; LED underwater lights;
infrared lamp fixtures; infrared illuminators; infrared lighting fixtures; infrared lamps, not for medical purposes; solar powered lamps; sun lamps; table lamps; searchlights; ceiling lights;
electric Chinese lanterns; electric candelabras; electric lanterns; electric candles; electric flashlights; electric night lights; electric luminaires; electric lamps; fluorescent electric light bulbs; filaments for electric lamps; electronic candles; light projectors {specify type of light, e.g., laser, etc.}; floodlights; miniature light bulbs; head torches;
motion sensitive security lights; book lights; tanning lamps; incandescent lamps; filters for stage lighting; decorative light in the nature of {specify the nature of the decorative light}; stage
lighting apparatus {specify the type of stage, e.g., film, theatre, etc.}; sconce lighting fixtures; lights for wall mounting; discharge lamps; organic light emitting diodes (OLED) lighting devices;
taillights for land vehicles; running lights for land vehicles; backup lights for land vehicles; lamps for tents; floor lamps; lamps; globes for lamps; lamp bases; lamp glasses; lamp casings; lamp
mantles; lamp shades; lampshade holders; lamp reflectors; candle lamps; curling lamps; chemiluminescent light sticks; miners' lamps; laboratory lamps; desk lamps; reflector lamps; wall lamps; lamps
for outdoor use; Japanese paper lanterns {specify whether the lanters are portable or standing}
Non-metal pulls; porcelain pulls; ceramic pulls; stone pulls; glass pulls; gun cabinets; drafting tables; storage
tanks made of plastic; storage tanks, not of metal or masonry; wood storage tanks; furniture fittings, not of metal; non-metal bed fittings; coffin fittings, not of metal; U-shaped pillows; air
mattresses used for {specify the use of the mattresses, e.g., camping, etc.}; air mattresses, not for medical purposes; spring mattresses; sleeping pads; sleeping mats; latex pillows; latex
mattresses; straw mattress; chair cushions; air cushions, not for medical purposes; air pillows, not for medical purposes; inflatable pillows; seat cushions; sleeping mats for use by children; neck
support cushions; neck-supporting pillows; inflatable neck support cushions; neck pillows; nursing pillows; mattresses made of flexible wood; bedding, namely, {specify the type of bedding}, except
linen; accent pillows; bolsters; head-supporting pillows; head supporting pillows; head support cushions for babies; anti-roll cushions for babies; baby bolsters; head positioning pillows for babies;
baby changing mats; maternity pillows; back support cushions, not for medical purposes; inflatable mattresses {specify the use or purpose}; cushions filled with hair; pillows; cushions (furniture);
mattresses; mats for infant playpens; air mattresses in the nature of a swimming float for recreational use; wickerwork {specify the meaning of wickerwork and identify the goods
that utilize}; nameplates, not of metal; grooming tables for companion animals; portable beds for pets; portable kennels; coat racks; hampers (baskets) for the transport of items {specify whether the
purpose is commercial or domestic}; tool boxes, not of metal, empty; bumper guards for furniture; bumper guards for cots, other than bed linen; storage racks for athletic training equipment; antique
reproduction furniture; kimono racks; chairs (seats); chair legs; chair beds; hydrostatic beds, not for medical purposes; air beds, not for medical purposes; ottomans; diaper changing stations;
chests for toys; counters {specify the use, e.g., sale display, knitting, etc.} (tables); drawer pulls of glass, porcelain or earthenware; furniture for camping; shoe
cabinets; coatstands; console tables; computer workstations comprising {specify major furniture components}(furniture); carts for computers (furniture); computer furniture; surfboard display racks;
surfboard storage racks; side tables; sideboards; shoe racks; showcases (furniture); storage racks for ski and sports equipment; storage racks for video game equipment; stools; sofas; sofa beds;
shelves for typewriters; typing desks; mirror tiles; towel stands (furniture); cask stands, not of metal; chests of drawers; storage racks for dumb-bells; furniture chests; cabinets for tea services;
tea tables; coffee tables; tea trolleys; non-metal trestles for supporting tables; metal trestles for use as table supports; drum thrones; drum stools; saw benches being
furniture; barstools; high chairs; banqueting chairs; piano benches; bean bag chairs; shaving mirrors; billiard cue racks; filing cabinets; storage racks for physical fitness equipment; beds;
bedsprings; bed headboards; bed frames; bedsteads of wood; bed bases; head-rests (furniture); wooden bedsteads; bed rails; baby safety gates {specify metal or non-metal};
playpens for babies; pool cue racks; box springs; magazine racks; massage tables; mattress foundations; lounge chairs; lounge furniture; reclining chairs; reclining armchairs; lockers; locker
mirrors; rocking chairs; wine racks; trolleys (furniture); easy-chairs; arm rests for furniture; costume stands; shoulder covers for clothing storage
(wardrobe); clothes rails; clothes drying racks (furniture); racks for hanging clothes; medicine cabinets; drawers (furniture parts); drawer pulls, not of metal; dividers for
drawers; storage racks for exercise weights; storage racks for athletic equipment; dressing tables; adjustable beds; furniture; mirrors being items of furniture; furniture frames; plastic handles for
furniture {descriptions of handles must indicate the goods for which the handles are intended}; legs for furniture; furniture partitions; furniture handles, not of metal { descriptions of handles
must indicate the goods for which the handles are intended}; furniture shelves; doors for furniture; furniture partitions of wood; trestle tables; flower-stands (furniture); luggage racks being
furniture; luggage stands being furniture; extendible sofas; school furniture; desks; living room furniture; mirrors (looking glasses); mirrored cabinets; mirror frames; dressers (dressing tables);
bentwood furniture; metal cabinets; metal furniture for camping; dog gates of metal (furniture); furniture of metal; cabinets of metal; tool cabinets of metal; seats of metal; tables of metal;
shelving of metal; storage cabinets of metal; metal display stands; inflatable chairs; inflatable furniture; slanted shelves; stands for calculating machines; stands for television sets; key
cabinets; stone pulls for cabinets, drawers and furniture; furniture made from steel tubing; seats; seating furniture; fitted cupboards; fitted kitchen furniture; work benches; index cabinets
(furniture); three-mirror dressing tables; umbrella stands; cheval glasses; booster seats; cabinet work; fodder racks; office desks; office tables; office armchairs; office chairs; office furniture;
office seats; portable desks; portable folding stadium seats; drawer pulls of porcelain; hand-held mirrors (toilet mirrors); chests, not of metal; book rests (furniture); bookshelves; shelves for
file cabinets; paper racks (furniture); furniture for displaying goods; display cases for merchandise; cots; valet stands; storage racks to hold vehicle mats; plant racks; plant stands; stands for
flower pots; flower-pot pedestals; cupboards; plate racks; dinner wagons (furniture); dining tables; table tops; dining chairs; meat safes; divans; bedroom furniture; newspaper display stands;
storage racks for firewood; chairs adapted for use by those with mobility difficulties; library shelves; silvered glass (mirrors); storage racks for water sports equipment; trays, {specify the use,
e.g., for domestic purposes} not of metal; folding shelves; folding tables {specify the type of tables}; folding beds; folding chairs; washstands (furniture); decorative mirrors; foot stools; kitchen
cabinets; racks {specify the use of the racks} (furniture); non-metal shelving; bamboo furniture; cupboards for tea-things (chadansu); chaise longues; nagamochi chests; display cases for
merchandise; newspaper display stands; display cases; display stands; showshelves; display boards; display cabinets; display tables; fish-fighting chairs affixed to boats; wall-mounted panel
units for exhibitions, displays and partitioning; point-of-purchase displays (furniture); mirrors enhanced by electric lights; electric piano keyboard benches; ceramic pulls for drawers; ceramic
pulls for furniture; ceramic pulls for cabinets; love seats; bunk beds; safety gates, not of metal, for babies, children, and pets (furniture); safety gates of metal for babies, children, and pets
(furniture); infant beds; cots for babies; baby changing platforms; worktops; dinner wagons (furniture); sales counters; storage racks for storing works of art; lap desks; armchairs; writing
desks; hospital beds; bottle racks; upholstered furniture; wood chopping blocks (tables); wall units (furniture); wall-mounted tool racks; wall-mounted diaper (napkin) changing
platforms; wall-mounted baby changing platforms; shelves for storage; jewellery organizer displays; hat stands; shelves for books; bookcases; book stands; vice benches (furniture); furniture made
from substitutes for wood; wood bedsteads; furniture made from wood; wooden beds; saw horses; furniture made of wood or wood substitutes; baseball bat racks; baseball and softball bat racks; baby
changing tables; high chairs for babies; fitted crib rail covers; wardrobes; bathroom mirrors; bathroom furniture; standing desks; screens for fireplaces (furniture); movable office partitions
(furniture); freestanding partitions (furniture); free-standing office partitions (furniture); room dividers; cast stone household and garden furniture; deck chairs; outdoor furniture; porch swings;
plastic furniture for gardens; garden furniture; lecterns; furniture, mirrors, picture frames; edgings of plastic for furniture; curtain tie-backs in the nature of textile curtain holders; blinds of
reed, rattan or bamboo (sudare); dreamcatchers (decoration); mobiles (decoration); slatted indoor blinds; indoor window shades (furniture); indoor window blinds (shade) (furniture); internal Venetian
blinds; paper blinds; interior textile window blinds; metal indoor window blinds; interior Venetian blinds; bamboo blinds; slatted indoor blinds for windows; bead curtains for decoration; decorative
mobiles; bamboo curtains; woven timber blinds (furniture); wall plaques made of plastic or wood; wind chimes (decoration); wind chimes; screens (furniture); oriental folding partition screens
(byoubu); screens of reed; screens made of reed or reed substitutes (furniture); decorative plastic boxes; decorative wooden boxes {specify the use of the box, e.g., jewelry, etc.}; golf course
benches; benches; benches for sports fields; inflatable publicity objects; signboards of plastic; plastic holders for signboards; wooden holders for signboards; wooden signboards; placards of wood or
plastics; upright signboards of wood or plastics; signboards of wood or plastics; mobile boarding stairs, not of metal, for passengers; grave markers of plastic; coffins; funerary urns; household
shinto altars (kamidana); life-size forms of the human body to display clothes; costume display stands; inflatable mattresses for use when camping
TEAS RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/C. Dionne Clyburn/
C. Dionne Clyburn
Trademark Examining Attorney
Law Office 110
571-272-9358
dionne.clyburn@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.