UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

 

 

INTERNATIONAL REGISTRATION NO. 1460325

 

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:  "Computer software and computer game software; downloadable computer software and computer game software; data storage media; game software adapted for use with television receivers; pre-recorded motion picture, television, and animation films; downloadable publications; memory sticks; electric power units" in International Class 9;

"magazines, books, printed periodicals, newsletters, and brochures; packaging materials; cards, collectable cards, trading cards; paper signs" in International Class 16; "Clothing, headgear; caps" in International Class 25; "Electronic games; toys, games and playthings; wooden toys, toys made of plastics; bags, cases and sleeves for storing and carrying apparatus for games" in International Class 28; and "Electronic game services; on-line gaming services; providing on-line computer games, multi-player matching services, and on-line entertainment in the nature of tournaments, cyber or virtual sports leagues and games shows; provision of games by means of a computer based systems; providing interactive social games in a virtual environment; entertainment services; sporting and cultural activities; providing on-line publications; presentation of movies, films, animations, and television programs; entertainment services in the nature of creation, development, and production of movies, films, animations, and television programs; organising events and conferences for entertainment purposes; organising of competitions; providing computer games and gaming services through an internet website portal" in International Class 41.  See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional partial 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.

 

The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes.  The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure. 

 

NO CONFLICTING MARK FOUND

 

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).

 

REQUIREMENTS

 

Before the application can be considered further, the following requirement(s) must be addressed.

IDENTIFICATION OF THE GOODS AND SERVICES INDEFINITE

 

For the reasons set forth below, the identification of goods and services needs clarification because it is, in part, indefinite and thus, the nature of the goods and services must be further specified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend the identification at issue to specify the common commercial name of the goods and services.  Id.

 

The portion of the identification that is unacceptable is underlined below with the explanation and/or suggestion for correcting the wording in brackets.  The remainder of the identification is acceptable.

 

Class 9:

 

Computer software [indicate the purpose or function of the software and if the software is field-specific, specify the field of use; Under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to specify software in International Class 9; for example, applicant may amend to the following format:  “Recorded computer software for {specify the function of the software, e.g., playing computer games}” and/or “Downloadable computer software for {specify the function of the software, e.g., playing computer games}”]

and computer game software [Under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to specify software in International Class 9; for example, applicant may amend to the following format:  “Recorded computer game software” and/or “Downloadable computer game software”];

downloadable computer software and computer game software [indicate the purpose or function of the software and if the software is field-specific, specify the field of use; for example, applicant may amend to the following format:  "Downloadable computer game software"];

data storage media [specify the type of storage media and clarified whether these are blank or prerecorded, and if prerecorded, specify the subject matter; for example, if accurate, may amend to “Blank digital storage media”];

game software adapted for use with television receivers [Under Nice 11-2019, computer software must be specified as "downloadable" and/or "recorded" to specify software in International Class 9; for example, applicant may amend to the following format:  "Recorded computer game software adapted for use with television receivers"];

pre-recorded motion picture, television, and animation films [specify the subject matter; for example, if accurate, may amend to “pre-recorded motion picture and television films about video games and the settings and characters thereof; motion picture films featuring animation”];

bags, cases and sleeves for storing and carrying telephones, computers, headphones and cameras; covers for mobile phones, portable computers and tablets; headphones;

downloadable publications [indicate that these are electronic publications, specify type of publication and subject matter; for example, may amend to “downloadable electronic publications, namely, books, magazines and newsletters in the field of computer games, computer game characters and electronic sports”];

decorative magnets;

memory sticks [MEMORY STICK is a registered trademark and cannot be used as a generic term in an identification of goods; for example, if accurate, may amend to “black USB flash drives”];

belts and straps for telephones, computers, headphones and cameras;

electric power units [further specify the nature of the goods, namely, the common commercial name or generic name of the goods; for example, if accurate, may amend to “electrical power distribution units”]

 

Class 16:

 

Paper and cardboard; comic books; newspapers, photographs,

magazines [specify subject matter; for example, if accurate, may amend to "magazines in the field of computer games”],

books [specify type, e.g., children’s books, address books, and/or subject matter, e.g., cook books, religious books, books in the field of {indicate subject matter}],

printed periodicals [specify subject matter; for example, may amend to "printed periodicals in the field of computer games"],

newsletters [specify subject matter; for example, if accurate, may amend to "newsletters in the field of computer games"],

notebooks,

and brochures [specify subject matter; for example, if accurate, may amend to "brochures in the field of computer games"];

computer game instruction manuals; writing paper and envelopes; calendars; bookmarks; notebook and calendar covers; packing paper, wrapping paper

and packaging materials [too broad because it could refer to goods in other classes such as “packaging materials, namely, plastic shipping and storage boxes” in International Class 20; specify material composition of the packaging materials for classification purposes; for example, if accurate, may amend to "Packaging materials made of recycled paper”];

cardboard boxes; party decorations made of paper; pens, erasers; posters, paper banners; figures made of paper; paper bags; sticker albums, stickers;

cards [further specify the type of cards; for example, if accurate, may amend to “note cards” or  “greeting cards”],

post cards,

collectable cards [further specify the type of collectable cards; for example, if accurate, may amend to "collectable trading cards",

trading cards [too broad because it could refer to goods in other classes such as trading cards for games in Class 28; specify the type of trading cards, e.g., sports trading cards or may amend to "trading cards, other than for games"];

paper signs [clarify to “printed paper signs”]

 

Class 25:

 

Clothing [specify the type of  clothing in Class 25; amend the identification by inserting the word "namely," after "clothing" and indicating the common commercial or generic name for the goods (e.g., shirts, pants, coats, dresses); although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods; for example, if accurate, applicant may amend to "clothing, namely, shirts, pants and jackets"],

footwear,

headgear [specify the types of headgear in International Class 25; 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; for example, if accurate, applicant may amend to “headwear”]

T-shirts, sweat shirts, shirts, blouses, vests; jeans, pants, shorts; underwear,

sportswear [specify the type of  sportswear in Class 25; amend the identification by inserting the word "namely," after "clothing" and indicating the common commercial or generic name for the goods (e.g., shirts, pants, coats, dresses); for example, if accurate, applicant may amend to "sportswear, namely, shirts, pants and jackets"];

socks; coats, jackets, suits; skirts; scarves; gloves, mittens; bathing suits, pajamas, negligee robes, bathrobes;

caps [further specify the nature of the goods; for example, if accurate, may amend to "caps being clothing"]

and hats

 

Class 28:

 

Electronic games [further specify the type of electronic games; for example, if accurate, may amend to "Hand-held electronic games adapted for use with television receivers only"];

hand-held units for playing electronic games; action skill games; action figures as toys;

toys, games and playthings [specify type, e.g., plush toys and beach balls];

board games; game cards; play sets for action figures; game cards and playing cards; soft dolls; plush toys; stuffed toys, water toys,

wooden toys [specify type, e.g., toy cars made of wood],

toys made of plastics [specify type, e.g., toy cars made of plastic];

children's multiple activity toys; puzzles; balloons;

bags, cases and sleeves for storing and carrying apparatus for games [specify type of games and indicate that these are specially adapted for that purpose; for example, if accurate, may amend to "bags, cases and sleeves specially adapted for storing and carrying apparatus for video game consoles”]

 

Class 41:

 

Electronic game services [clarify to “Electronic games services provided by means of the internet”];

providing on-line computer games;

on-line gaming services [further specify the nature of the services, namely, the common commercial or generic name of the services; for example, if accurate, may amend to “on-line gaming services in the nature of conducting online computer game tournaments”];

providing on-line computer games, multi-player matching services, and on- line entertainment in the nature of tournaments, cyber or virtual sports leagues and games shows [further specify the nature of the services as to the multi-player matching services, on- line entertainment in the nature of tournaments, cyber or virtual sports leagues and games shows; for example, if accurate, may amend to "providing on-line computer games, providing multi-player video game matching services, namely, organization of electronic game competitions, providing on-line entertainment in the nature of computer game tournaments, cyber or virtual electronic sports leagues and ongoing television game shows”];

providing information on-line relating to computer games;

provision of games by means of a computer based systems [further specify the nature of the services; for International Class 41, must indicate that these are on-line computer games; for example, if accurate, may amend to “Providing on-line computer games”];

providing interactive social games in a virtual environment [for International Class 41, must indicate that these are on-line games; for example, if accurate, may amend to "Providing on-line interactive social games in a virtual environment"];

providing entertainment information relating to computer games via information network;

entertainment services [specify the type of entertainment services;  for example, if accurate, may amend to  “entertainment services in the nature of presenting live musical performances”]   

sporting and cultural activities  [indicate specific type of sporting and cultural activities or further clarify nature of the services; for example, if accurate, may amend to “Organization of events for cultural purposes; Organizing sporting events, namely, {indicate type of event being organized, e.g., swimming meet, soccer competition, etc.}”];

providing on-line publications [for classification purposes, indicate that these are online non-downloadable publications and specify (1) the common name of the type of publication, such as brochures, newsletters, magazines; and (2) the subject matter of the publication; for example, if accurate, applicant may amend to “providing a website featuring non-downloadable electronic publications, namely, {indicate specific type of publication, e.g., newsletters} in the field of {indicate subject matter}”];

presentation of movies, films, animations, and television programs [further specify the nature of the services, namely, the common commercial or generic name of the services; for example, if accurate, may amend to “production of movies, films, animated movies, and television programs”];

entertainment services in the nature of creation, development, and production of movies, films, animations, and television programs [term “animations” needs to further specified; entertainment services in the nature of creation, development, and production of movies, films, animation movies, and television programs”];

organising events and conferences for entertainment purposes [further specify the type of events and conferences; for example, if accurate, may amend to “organizing social entertainment events and conferences for entertainment purposes”];

organising of competitions [further specify the type of events and conferences; for example, if accurate, may amend to "organizing of sports and electronic sports competitions”];

providing computer games and gaming services through an internet website portal [further specify the nature of the services; for example, if accurate, may amend to “Providing on-line computer games through an internet website portal”];

organising and conducting video and computer game matches and tournaments; organising of electronic sports events

 

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.  See TMEP §§1402.01, 1402.03(a).  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  Id. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications 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); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.

 

RESPONDING TO THIS OFFICE ACTION

 

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.

 

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 duly 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(c).  The only attorneys who may practice before the USPTO in trademark matters are (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 U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

Respond online to this letter.  Use the TEAS “Response to Office Action” online form to file a response.

 

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 in International Classes 9, 16, 25, 28 and 41 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 remaining goods and services in International Classes 9, 16, 25, 28 and 41.  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. 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 113

U.S. Patent and Trademark Office

571-272-9343

douglas.lee4@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.

 

Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees.  These companies often have names similar to the USPTO.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.