Offc Action Outgoing

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).

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.

SEARCH OF USPTO DATABASE OF MARKS

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.

SUMMARY OF OFFICE ACTION:

Description of Mark Required

· Amendment of Identification of Services Required

· Response Guidelines

DISCLAIMER REQUIRED Disclaimer Required

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

Applicant must disclaim the wording “ENTERTAINMENT” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).

This wording appears in applicant's identification of goods and/or services. Thus, the wording merely describes applicant’s goods and/or services because it describes the purpose of applicant’s goods and services.

Applicant may respond to this issue by submitting a disclaimer in the following format:

No claim is made to the exclusive right to use “ENTERTAINMENT” apart from the mark as shown.

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

DESCRIPTION OF MARK REQUIRED

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not explicitly state whether color is being used in the mark. 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(b). Applications for marks depicted in color must include a color drawing and a statement (1) listing all the colors claimed as a feature of the mark and (2) describing where each color appears in the literal and design elements in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(b). Because the application does not include an explicit statement about color, the record is not clear as to whether it is a feature of the mark.

To clarify whether color is claimed as a feature of the mark, applicant must satisfy one of the following:

(1) If color is not a feature of the mark, applicant must submit (a) a new black-and-white drawing of the mark to replace the color drawing in the record, (b) a statement that no claim of color is made in the international registration, and (c) a description of the literal and design elements in the mark omitting any reference to color. 37 C.F.R. §2.37; TMEP §§807.07(b), 807.12(c); see TMEP §§808 et seq.

The following description is suggested, if accurate:

The mark consists of a letter “R” to the left of the wording “RELIC” which is above the wording “ENTERTAINMENT,” all in a stylized font. A rectangular boarder encompasses all the wording.

(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors claimed as a feature of the mark and (b) describing where the colors appear in the literal and design elements in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(b), 807.12(c). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must include a statement indicating that in the description. See TMEP §807.07(d), (d)(iii).

The following color claim and description are suggested, if accurate:

Color claim: The colors black and yellow are claimed as a feature of the mark.

Description: The mark consists of a yellow stylized letter “R” to the left of the wording “RELIC” in a stylized black font which is above the wording “ENTERTAINMENT” in a stylized black font. A rectangular boarder encompasses all the wording with a black background behind the letter “R” and a yellow background behind the wording “RELIC ENTERTAINMENT.”

AMENDMENT OF IDENTIFICATION OF SERVICES REQUIRED

The following wording is required to be amended for clarity: providing entertainment information on on-line games and providing entertainment information about amusement facilities. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Applicant may substitute the following wording, if accurate:

Class 009: Downloadable computer game programs; recorded computer game programs; downloadable computer game software; recorded computer game software; downloadable video game software; recorded video game software; downloadable video game programs; recorded video game programs; video game discs and cartridges; downloadable computer game software for use on mobile and cellular phones; mobile phone straps; protective cases for cell phones; downloadable graphics, images and moving images for computers, video game machines or mobile phones featuring scenes and characters based on computer and video games; downloadable computer game and video game software; downloadable music files via a global computer network and wireless devices; sound recorded compact discs featuring music, video game sounds and dialogues; compact discs, magnetic audio tapes, and downloadable files featuring musical sound recordings; prerecorded video discs and magnetic audio tapes featuring music, comedy, drama, action, adventure and animation; electronic publications, namely, downloadable books and magazines in the field of computer games, video games, cartoons and music; phonograph records featuring music

Class 041: Entertainment services, namely, providing on-line video games and on-line computer games; providing entertainment information in the field of on-line games; providing non-downloadable on-line computer graphics, moving images and images featuring scenes and characters based on computer and video games by computer networks, video game machines or mobile phones; providing amusement facilities; providing amusement arcade services; providing amusement parks; organization, production and presentation of video and computer game contests and tournaments; providing entertainment information in the field of amusement facilities; providing on-line music, not downloadable

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 amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. 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 amended. 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).

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, 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.

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. To appoint an 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).

How to respond. Click to file a response to this nonfinal Office action.

/Christopher Renneker/

Examining Attorney

Law Office 121

571-272-8045

christopher.renneker@uspto.gov

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.