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. 79287094
Mark: RETROARCH
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Correspondence Address:
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Applicant: Daniel Robert Josef de Matteis h.o.d.n. ETC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1534771
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
INTRODUCTION
PRIOR PENDING APPLICATION NOTED
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.
IDENTIFICATION OF THE GOODS
Applicant must clarify some of the wording in the identification of goods because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Wording in applicant’s proposed identification of goods and/or services that should be deleted appears in strikethrough.
Additional suggested wording appears in bolded italics. Please note that these forms of stylization are being used to
provide guidance in forming an acceptable amended identification; they should not be made part of any amendments offered by applicant in its response.
Applicant may adopt the following identification, if accurate:
“Downloadable and recorded games software for use with video game consoles; downloadable and recorded software programs for playing video games; downloadable and recorded
interactive computer game software; downloadable computer programs for
[INDICATE function and field of use if software is field-specific, e.g., for making airline reservations, for data processing, for maintaining patient medical records in the field
of cancer research, etc.] [downloadable software]; software drivers, namely, downloadable UPI (universal peripheral interface) software;
downloadable software for [INDICATE function and field of use if software is field-specific, e.g., for making airline reservations, for data
processing, for maintaining patient medical records in the field of cancer research, etc.]; games software, namely, downloadable computer game
software; downloadable multimedia software for [INDICATE function and field of use if
software is field-specific, e.g., for making airline reservations, for data processing, for maintaining patient medical records in the field of cancer research, etc.]; interfaces for
computers; software suites, namely, downloadable software for [INDICATE function and field of use
if software is field-specific, e.g., for making airline reservations, for data processing, for maintaining patient medical records in the field of cancer research, etc.]; interactive
entertainment software, namely, downloadable software for [INDICATE function and field of use if
software is field-specific, e.g., for playing video games, for playing music, etc.]; downloadable graphical user interface software; downloadable
computer game software; computer games programmes downloaded via the internet [software]; downloadable interactive multimedia software for playing
games; interactive entertainment software for use with personal computers, namely, downloadable software for
[INDICATE function and field of use if software is field-specific, e.g., for playing video games, for playing music, etc.]; computer application software featuring games and
gaming, namely, downloadable and recorded game software; downloadable interactive entertainment software for playing computer games; downloadable
interactive entertainment software for playing video games; downloadable computer game software via a global computer network and wireless devices; front-end application for loading modular programs,
namely, downloadable and recorded software for [INDICATE function and field of use if software is
field-specific]; integration software, namely, downloadable middleware for software application integration; modular front-end application for
loading modular cores, namely, downloadable and recorded software for [INDICATE function and field
of use if software is field-specific];” in Class 9
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.
For information on how to identify the goods and services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”
U.S. LAWYER REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
CLOSING
For this application to proceed, 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.
Do not respond via e-mail; e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. How to respond: Click to file a response to this nonfinal Office action.
/Tracy Fletcher/
Examining Attorney
Law Office 115
U.S. Patent and Trademark Office
Direct Dial: 571-272-9471
tracy.fletcher@uspto.gov
RESPONSE GUIDANCE