| To: | Nintendo of America Inc. (tmcentral@pirkeybarber.com) |
| Subject: | tmng.notices@uspto.gov |
| Sent: | 2023-02-14 |
| Sent As: | tmng.notices@uspto.gov |
| Attachments: |
U.S. Application Serial No. 79344950
Mark: NINTENDO
| Correspondence Address:
Steven M. Espenshade Pirkey Barber PLLC 1801 East 6th Street Suite 300 Austin TX 78702 UNITED STATES |
Applicant: Nintendo of America Inc.
Reference/Docket No. NINT440US
Correspondence Email Address: tmcentral@pirkeybarber.com
International Registration No. 1671924A
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 partial refusal. This is a provisional partial 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). This refusal applies to only the following goods and services in International Classes 016 and 035
in the U.S. application: Office requisites, namely, binders and folders;
notebooks; postcards; greeting cards; books in the field of children’s entertainment, fiction stories, and video games; comic books; posters" in Class 016; and "marketing" in Class
035.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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 USPTO database of registered and pending marks and has 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 wording “
Office requisites, namely, binders and folders; notebooks; postcards; greeting cards; books in the field of children’s entertainment, fiction stories, and video games; comic books; posters" in Class 016 of the identification of goods; and "marketing" in Class 035
of t
he identification of services is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services 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). In Class 016, applicant must indicate that the goods are printed or specify the Class 016 nature of the goods. In Class 035, applicant must indicate the wording "marketing" is a service as this wording alone is not clearly a Class 035 service without use of the additional word "services".
Additionally,
t
he identification of goods and/or services contains brackets. Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification. See TMEP §§1402.04, 1402.12. The only exception for including parenthetical information in identifications is if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” See TMEP §1402.12.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
If applicant does not remove the brackets in Classes 003, 014, and 032, the Examining Attorney may remove the brackets via a no-call
Examiner's Amendment.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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).
Applicant may amend the identification to the following, if accurate:
International Class 003: Laundry detergent; laundry soap; soap, namely, bath soap, bar soap, body wash for humans or animals; shampoos; shampoos for pets; non-medicated dentifrices; toothpaste; non-medicated mouth wash and rinse; cosmetics; bath preparations, not for medical purposes; hair spray; mascara; decorative transfers for cosmetic purposes; temporary tattoo transfers for use as cosmetics; cosmetics for children; beauty masks; perfumery; air fragrancing preparations; air fragrance reed diffusers; room fragrances; fragrance sachets; pet fragrances; false nails; false eyelashes; nail art stickers
International Class 005: Acceptable as is.
International Class 009: Acceptable as is.
International Class 011: Acceptable as is.
International Class 014: Key rings; key chains comprised of split rings with decorative fobs or trinkets; charms for key rings; jewelry boxes; commemorative coins; collectible coins; jewelry; necklaces; bracelets; jewelry charms; earrings; tie pins; rings being jewelry ; medals; ornamental lapel pins; shoe jewelry; watches; clocks; watch bands
International Class 016: Office requisites, namely, loose-leaf binders and file folders; wrapping paper; paper bags and sacks; place mats of paper; coasters of paper; table napkins of paper; tablecloths of paper; paper; stationery; printed notebooks; pen cases; paint boxes for use in schools; writing implements; pens; pencils; rubber erasers; pencil sharpeners, electric or non-electric; printed postcards; printed greeting cards; stickers; printed matter, namely, calendars, children's activities books, magazines and manuals in the field of video games; Printed books in the field of children's entertainment, fiction stories, and video games; printed comic books; printed posters; paintings; photograph stands; paper party decorations
International Class 018: Acceptable as is.
International Class 020: Acceptable as is.
International Class 021: Acceptable as is.
International Class 024: Acceptable as is.
International Class 025: Acceptable as is.
International Class 027: Acceptable as is.
International Class 028: Acceptable as is.
International Class 029: Acceptable as is.
International Class 030: Acceptable as is.
International Class 032: Soda water; table waters; fruit juice; soft drinks; vegetable juices being beverages; non-alcoholic carbonated beverages; non-alcoholic sparkling fruit juice beverages; non-alcoholic fruit juice beverages; whey beverages
International Class 035: Advertising; public relations; organization of exhibitions for commercial or advertising purposes; demonstration of goods; promotion of goods and services through sponsorship of sports events; marketing services; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices; online retail store services for downloadable and pre-recorded music and movies; retail store services featuring games; retail store services featuring virtual game goods, namely, virtual footwear, clothing, headwear, eyewear, bags, art, toys, accessories, digital animated and non-animated designs and characters; retail store services featuring toys
International Class 038: Acceptable as is.
International Class 041: Acceptable as is.
Guide for Amending the Identification of Goods and Services
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.
Failing to respond to this provisional refusal Office action will result in partial abandonment of the U.S. application. If applicant does not respond within the six-month period, the goods and/or services identified above, to which this provisional refusal applies, will be deleted from the application. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
In such case, the application will then proceed with International Classes 003, 005, 009, 011, 014, 018,
020, 021, 024, 025, 027, 028, 029, 030, 032, 038 and 041 and the following goods in Class 016 and
services in Class 035 only:
International Class 016: wrapping paper; paper bags and sacks; place mats of paper; coasters of paper; table napkins of paper; tablecloths of paper; paper; stationery; pen cases; paint boxes for use in schools; writing instruments; pens; pencils; rubber erasers; pencil sharpeners, electric or non-electric; stickers; wall decals; printed matter, namely, calendars, children's activities books, magazines and manuals in the field of video games; paintings; photograph stands; paper party decorations
International Class 035: Advertising; public relations; organization of exhibitions for commercial or advertising purposes; demonstration of goods; promotion of goods and services through sponsorship of sports events; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices; online retail store services for downloadable and pre-recorded music and movies; retail store services featuring games; retail store services featuring virtual game goods, namely, virtual footwear, clothing, headwear, eyewear, bags, art, toys, accessories, digital animated and non-animated designs and characters; retail store services featuring toys
Who can sign the response.
Applicant has a U.S.-licensed attorney. The attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §712.01. The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, and (2) Canadian trademark attorneys or agents reciprocally recognized (see http://tmep.gov.uspto.report/RDMS/TFSR/current#/current/r-81040e3b-916b-4cf4-a81e-a2fad65829fb.html for information on reciprocal recognition) by the USPTO's Office of Enrollment and Discipline (OED) to represent applicants located in Canada and who are working under a qualified U.S.-licensed attorney. See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e); TMEP §602.
How to respond. Click to file a response to this nonfinal Office action.