Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

 

International Registration No. 1631864

 

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). 

 

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.

 

SUMMARY OF ISSUES:

• Identification of Goods and Services
• Email Address and U.S. Licensed Counsel

 

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 09:  Computer game software; downloadable computer game software; 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; belts and straps for telephones, computers, headphones and cameras; electric power units; all the aforementioned goods relating to computer games and computer game characters

 

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; all the aforementioned goods relating to computer games and computer game characters

 

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; all the aforementioned goods relating to computer games and computer game characters

 

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; bags, cases and sleeves for storing and carrying apparatus for games; all the aforementioned goods relating to computer games and computer game characters

 

Class 41:  Electronic game services; providing on-line computer games; 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; 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 entertainment information relating to computer games via a web site; 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; all the aforementioned services relating to computer games and computer game characters

 

Particular wording in the identification of goods and services is indefinite and must be clarified because it does not make clear the nature of the goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods and/or specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the goods and/or services have no common commercial or generic name, applicant must describe the product, its main purpose, or the services intended uses or describe or explain the nature of the services using clear and succinct language.  See id.

 

For example, the identification for game software in International Class 9 is indefinite and too broad and must be clarified to specify whether its format is downloadable or recorded.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is an entertainment service in International Class 41.  See TMEP §1402.03(d).

 

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).

 

Additionally, the word “clothing” in the identification of goods in International Class 25 is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (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. 

 

And, the word “headgear” in the identification of goods must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  This word is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class. 

 

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 09:  Recorded computer game software; downloadable computer game software; {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, e.g., computer games and computer game characters}; 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, e.g., computer games and computer game characters}; belts and straps specially adapted for telephones, computers, headphones and cameras; electrical power distribution units; all the aforementioned goods relating to computer games and computer game characters

 

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, e.g., computer games and computer game characters}; 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; all the aforementioned goods relating to computer games and computer game characters

 

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; all the aforementioned goods relating to computer games and computer game characters

 

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; 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.}; all the aforementioned goods relating to computer games and computer game characters

 

Class 41:  Electronic game services, namely, {indicate specific Class 41 services intended, e.g., providing online electronic games, etc.}; providing on-line computer games; 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.}; 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, e.g., computer games and computer game characters}; 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 entertainment information relating to computer games via a web site; 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; all the aforementioned services relating to computer games and computer game characters

 

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.

 

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

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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

• 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.