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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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 Results

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).

Summary of Issues

• Definite Identification of Goods and Services Requirement

• Email address required

• Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal

Definite Identification of Goods and Services Requirement

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 in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).

Wording in the identification of goods is (1) indefinite and must be clarified, (2) overbroad in that it encompasses goods/services in more than one international classification and/or (3) misclassified. See TMEP §1402.01. Please see suggested identification below for specific wording that requires clarification and/or reclassification.

Please note that bolded wording/punctuation indicates a suggested addition(s)/amendment(s) to applicant’s current identification to make it definite. In addition, please note that the bracketed entries below require applicant to insert information.

The following substitute wording is suggested, if accurate:

Class 09: Downloadable computer software for the administration of on-line games and gaming; downloadable computer game software for use with on-line interactive games; downloadable computer gaming software; downloadable virtual reality game software; downloadable interactive multimedia software for playing games; downloadable electronic game software for mobile phones; downloadable electronic game software for wireless devices; downloadable electronic game software for handheld electronic devices; downloadable games software for use with video game consoles; downloadable computer games programs; downloadable games software; downloadable interactive entertainment software for playing computer games; downloadable web application and server software for [specify function, e.g., controlling and managing access server applications]; cloud servers, namely, computer servers

Class 41: Entertainment services, namely, [specify, e.g., providing online video games]; on-line gaming services in the nature of computer game tournaments; providing online electronic games from a computer network; providing online information relating to computer games and computer enhancements for games; provision of online computer games; providing online electronic newsletters in the field of computer games via e-mail; providing electronic games services via online and a global computer network; providing online interactive multi-player computer games via the internet and electronic communication networks; organization of electronic game competitions

Class 42: Website hosting services; software as a service featuring software for [specify function, e.g., use in database management; (this does not include providing on-line computer games that are played on-line which belong in Class 41]; rental of software; hosting of interactive computer software applications of others; hosting online web facilities for others for sharing online content, in particular of online games; hosting of access control as a service (ACaaS) servers and software for [specify function, e.g., operating virtual servers] of others; cloud hosting provider services; programming of computer game software; design of computer game software; design and development of computer game software; rental of server memory space; server hosting; ~~providing temporary use of online non-downloadable games software for computer networks and servers~~ [this does not include providing on-line computer games that are played on-line which belong in Class 41]; rental of memory space on servers for hosting functions for online computer games

Additions to Identification Not Permitted

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.

To expedite prosecution of this trademark application, when amending the identification as required above, the Office strongly encourages the applicant to select pre-approved wording contained within this manual that accurately describes the goods and/or services therein. Failure to do so may result in delay.

Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).

Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented 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); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as Germany. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.

To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. 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); TMEP §604.01.

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

/William T. Verhosek/

William T. Verhosek

Trademark Examining Attorney

USPTO/Law Office 114

571-272-9464

william.verhosek@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.