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. 79323265
Mark: CLASH MINI
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Correspondence Address: ROSCHIER BRANDS, ATTORNEYS LTD.
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Applicant: Supercell Oy
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1620213
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 (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).
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.
IDENTIFICATION OF GOODS AND SERVICES
The goods and services are:
Class 06: Chains of common metal; statuettes of common metal; non-electric locks of metal; trophies of common metal; nameplates of common metal; metal rings for keys
Class 09: 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; bags, cases and sleeves for storing and carrying telephones, computers, headphones and cameras; covers for mobile phones, portable computers and tablets; headphones; downloadable publications; decorative magnets; belts and straps for telephones, computers, headphones and cameras; electric power units
Class 16: Paper and cardboard; comic books; newspapers, photographs, magazines, books, printed periodicals, newsletters, notebooks, and brochures; computer game instruction manuals; writing paper and envelopes; calendars; bookmarks; notebook and calendar covers; packing paper, wrapping paper and packaging materials; cardboard boxes; party decorations made of paper; pens, erasers; posters, paper banners; figures made of paper; paper bags; sticker albums, stickers; cards, post cards, collectable cards, trading cards; paper signs
Class 18: Bags; all purpose sport bags; carry-all bags; leather bags, suitcases and wallets; shoulder bags; textile shopping bags; hand bags; luggage bags; school bags
Class 20: Furniture; sculptures made of plastic; mobiles being decorative articles; storage boxes made of wood; decorative wooden objects; baskets, not of metal; trophies of plastic; nameplates, not of metal; figures made of plastics
Class 21: Household or kitchen utensils and containers; mugs; bottles and vacuum bottles; statues of china or glass; beverage glassware; candlesticks; candle rings; works of art made of glass; coupes and vases; works of art, of porcelain, terra-cotta or glass
Class 25: Clothing, footwear, headgear; T-shirts, sweat shirts, shirts, blouses, vests; jeans, pants, shorts; underwear, sportswear; socks; coats, jackets, suits; skirts; scarves; gloves, mittens; bathing suits, pajamas, negligee robes, bathrobes; caps and hats
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; barrettes [hair-slides], hair pins, and hair ties; hat pins; button badges and pins; trimmings for clothing; shoe ornaments, not of precious metal; brassards; buttons; belt buckles
Class 28: Electronic games; hand-held units for playing electronic games; action skill games; action figures as toys; toys, games and playthings; board games; game cards; play sets for action figures; game cards and playing cards; soft dolls; plush toys; stuffed toys, water toys, wooden toys, toys made of plastics; children's multiple activity toys; puzzles; balloons; bags, cases and sleeves for storing and carrying apparatus for games
Class 41: Electronic game services; providing on-line computer games; 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; providing information on-line relating to computer games; provision of games by means of a computer based systems; providing interactive social games in a virtual environment; providing entertainment information relating to computer games via information network; 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; organising and conducting video and computer game matches and tournaments; organising of electronic sports events
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, 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. See TMEP §1904.02(c)(ii).
Examples of acceptable identifications for clothing and/or apparel in International Class 25 include the following: “shirts,” “shorts,” “pants,” “coats,” “dresses,” “skirts,” and “socks.” Applicant may also amend the identification by inserting the word “namely,” after “clothing” and then listing the specific types of clothing items.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, 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. See TMEP §1904.02(c)(ii).
Applicant may (1) amend “headgear” to “headwear,” and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items in that class (e.g., headgear, namely, sports caps and hats, for International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
Applicant may adopt the following wording, if accurate:
Class 06: Chains of common metal; statuettes of common metal; non-electric locks of metal; trophies of common metal; nameplates of common metal; metal rings for keys, namely, split rings of common metal for keys
Class 09: Recorded computer software for {specify the function of the software, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; recorded computer game software; downloadable computer software for {specify the function of the software, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; downloadable computer game software; blank electronic data storage media; {indicate format: recorded or downloadable} computer game software adapted for use with television receivers; pre-recorded motion picture, television, and animation films about {indicate subject matter or field of pictures and shows}; bags, cases and sleeves specially adapted for storing and carrying telephones, computers, headphones and cameras; covers specially adapted for mobile phones, portable computers and tablets; headphones; downloadable electronic publications in the nature of {indicate specific type of publication, e.g., book, magazine, manual} in the field of {indicate subject matter of publication}; decorative magnets; belts and straps specially adapted for telephones, computers, headphones and cameras; electrical power distribution units
Class 16: Paper and cardboard; printed comic books; printed matter, namely, newspapers, photographs, magazines, books, printed periodicals, newsletters, notebooks, and brochures in the field of {indicate type or subject matter}; printed computer game instruction manuals; writing paper and envelopes; printed calendars; bookmarks; notebook and calendar covers; packing paper, wrapping paper and packaging materials of paper; cardboard boxes; party decorations made of paper; pens, erasers; posters made of paper, paper banners; figures made of paper; paper bags; stickers and sticker albums; printed matter, namely, greeting cards, post cards, collectable cards, sports trading cards; paper signs
Class 18: Bags, namely, {indicate specific Class 18 goods intended, e.g., athletic bags, etc.}; all purpose sport bags; carry-all bags; leather bags, suitcases and wallets; shoulder bags; textile shopping bags; handbags; luggage bags, namely, {indicate specific Class 18 goods intended, e.g., luggage, etc.}; school bags
Class 20: Furniture; sculptures made of plastic; mobiles being decorative mobiles; storage boxes made of wood for general use; decorative wooden objects, namely, {indicate specific Class 20 goods intended, e.g., figures made of wood, etc.}; baskets, not of metal, namely, {indicate specific Class 20 goods intended, e.g., baskets for transporting goods for commercial purposes, bakers’ bread baskets, etc.}; trophies of plastic; nameplates, not of metal; figures made of plastics
Class 21: Household or kitchen utensils and containers, namely, {indicate specific Class 21 goods intended, e.g., rolling pins, spatulas for kitchen use, barbecue turners, whisks, containers for household use, etc.}; mugs; bottles sold empty and vacuum bottles; statues of china and glass; beverage glassware; candlesticks; candle rings; works of art made of glass; coupes and vases; works of art of porcelain, terra-cotta and glass
Class 25: Clothing, namely, {indicate specific item e.g. shirts, pants, skirts, etc.}, footwear, headwear; T-shirts, sweat shirts, shirts, blouses, vests; jeans, pants, shorts; underwear; sportswear, namely, {indicate specific item e.g. sports bras, sports caps and hats, sports pants, sports singlets, etc.}; socks; coats, jackets, suits; skirts; scarves; gloves, mittens; bathing suits, pajamas, negligee robes, bathrobes; headwear, namely, caps and hats
Class 26: Lace and embroidery, haberdashery ribbons and braid; buttons, hooks and eyes, sewing pins, and needles; barrettes being hair-slides, hair pins, and hair ties; hat pins, other than jewellery; ornamental novelty buttons, badges and pins; trimmings for clothing; shoe ornaments, not of precious metal, namely, shoe trimmings; brassards; buttons; belt buckles
Class 28: Electronic games other than those adapted for use with television receivers only; hand-held units for playing electronic games; action skill games; toy action figures; toys, games and playthings, namely, {indicate specific Class 28 goods intended, e.g., construction toys, action target games, puppet theatres, etc.}; board games; game cards; play sets for action figures; game cards and playing cards; soft sculpture dolls; plush toys; stuffed toys; water toys; wooden toys, namely, {indicate specific Class 28 goods intended, e.g., kendo wooden swords, wooden toy model cars, etc.}; toys made of plastics, namely, {indicate specific Class 28 goods intended, e.g., plastic character toys, clockwork toys of plastic, plastic toy hoops, etc.}; children's multiple activity toys; puzzles; balloons; bags, cases and sleeves specially adapted for storing and carrying apparatus for games, namely, {indicate specific Class 28 game apparatus intended, video game consoles, video hand-held video game units, etc.}
Class 41: Electronic game services, namely, {indicate specific Class 41 services intended, e.g., providing online electronic games, etc.}; providing on-line computer games; on-line gaming services, namely, {indicate specific Class 41 services intended, e.g., providing an on-line board game, etc.}; entertainment services, namely, providing on-line computer games, multi-player matching services in the nature of providing online multiplayer video games, and on-line entertainment in the nature of {indicate specific type, e.g. video game} tournaments, cyber or virtual sports leagues, and production and distribution of games shows; providing information on-line relating to computer games; provision of games by means of a computer based systems, namely, providing on-line computer games; providing interactive social games in a virtual environment, namely, providing on-line computer games; providing entertainment information relating to computer games via information network; entertainment services, namely, {indicate specific Class 41 services intended, e.g., providing online electronic games, providing online multiplayer video games, etc.}; organizing community sporting and cultural activities; providing on-line non-downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., books, magazines, brochures, etc.} in the field of {indicate subject matter of publication}; presentation in the nature of production and distribution 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 in the field of {specify field, e.g., film, computer games, etc.}; organising of competitions, namely, {indicate specific Class 41 services intended, e.g., organization of electronic sports competitions, etc.}; providing computer games and gaming services through an internet website portal, namely, {indicate specific Class 41 services intended, e.g., providing online computer games, etc.}; entertainment services, namely, organising and conducting video and computer game matches and tournaments; organising of electronic sports events, namely, organization of electronic sports competitions
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.
Applicant must disclaim the wording “MINI” because it is merely descriptive of a characteristic or feature 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).
The attached evidence from The American Heritage Dictionary shows this wording means “Something that is distinctively smaller than other members of its type or class”. And the attached evidence from the website of Uptodown describing applicant’s goods and services stating that they pertain to tiny versions of applicant’s characters from the Clash universe. Thus, the wording merely describes applicant’s goods and/or services because they feature or relate to tiny or smaller versions of characters from the applicant’s Clash universe.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MINI” 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.
EMAIL ADDRESS AND U.S. LICENSED COUNSEL
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 Finland. 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/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.
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. 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.
/Marta Stadeli/
Examining Attorney
Law Office 123
(571) 272-6747
marta.stadeli@uspto.gov
RESPONSE GUIDANCE