| To: | Build a Rocket Boy Games Ltd. (ch.tm@us.dlapiper.com) |
| Subject: | tmng.notices@uspto.gov |
| Sent: | 2023-06-23 |
| Sent As: | tmng.notices@uspto.gov |
| Attachments: |
U.S. Application Serial No. 79364571
Mark:
| Correspondence Address:
Michael A. Geller DLA Piper LLP (US) P.O. BOX 64807 Chicago IL 60664-0807 UNITED STATES |
Applicant: Build a Rocket Boy Games Ltd.
Reference/Docket No. N/A
Correspondence Email Address: ch.tm@us.dlapiper.com
International Registration No. 1717227
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. It is noted that applicant has retained U.S. counsel and has also supplied an email address. 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 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.
SUMMARY OF ISSUES:
A. IDENTIFICATION OF GOODS AND SERVICES
The identification contains a great number of goods and services that are indefinite and must be clarified as they fail to specify the nature of the goods by their common commercial names, (e.g. printed comics, online retail store services, etc.). The identification also contains a large number of clauses that are redundant.
The identification for software and computer programs in International Class 9 is indefinite and too broad and must be clarified to specify whether the 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 a service in International Class 42. See TMEP §1402.03(d). This applies as well to game software. Multiple software items in Class 9 must also recite a function of the software, (e.g. effectuating transactions, playing games, etc). Applicant must also clarify a function that tangentially involves virtual currencies as virtual currency is not a good in-trade nor is it a software function in and of itself.
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).
Several items in Class 16 must specify that the goods are printed in nature, and applicant must specify a subject-matter for its "books."
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.
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.”
The identification of goods in Class 28 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 that have been deleted from registrations, (2) goods 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.
Applicant's software and platform as a service services in Class 42 must specify a particular function of the online software service. Applicant must also clarify that its hosting service is for the benefit of a third party.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
In International Class 9: “Game software, downloadable; computer and video games software, downloadable; electronic game software; computer and video game discs; computer and video game cartridges; computer and video game cassettes, blank recordable CD-Rs and DVD-Rs; interactive computer and video game programs, downloadable; interactive multimedia software, downloadable, for playing games; recorded computer game software; game software, downloadable, for use with video game consoles; Downloadable computer game entertainment software for playing computer games; Downloadable computer game software for playing online games; electronic game software, downloadable, for mobile phones, handheld electronic devices and wireless devices; pre-recorded compact discs featuring games; computer hardware for games and gaming; video games in the form of computer programs recorded on data carriers; downloadable data files relating to games and gaming; computer application software, downloadable, featuring games and gaming; downloadable software in the nature of mobile applications for playing games; Downloadable mobile computer application software for mobile phones, portable media players and handheld computers, namely, downloadable software for playing mobile computer and video games; Downloadable application software for social networking services via the internet; downloadable interactive entertainment software for playing computer and video games; downloadable electronic publications, namely, books, booklets, manuals, magazines, written articles, newsletters and instructional guides relating to games and gaming; Downloadable computer software for the administration of online games and gaming; computer firmware, downloadable, for playing games and gaming; Downloadable firmware for computer peripherals, namely, downloadable firmware relating to computer peripherals used for playing games and gaming; computers and computer hardware for games and gaming; game programs, downloadable, for arcade video game machines; computer software, downloadable, to enable virtual reality viewing of environments; computer graphics software, downloadable, for {specify function of software}; Downloadable graphical user interface software; virtual reality software, downloadable, for playing games and gaming; virtual reality headsets; virtual reality game software, downloadable; augmented reality software, downloadable, for use in playing games and gaming; augmented reality software, downloadable, for creating maps; augmented reality software, downloadable, for use in mobile devices for playing games and gaming; augmented reality software, downloadable, for use in mobile devices for integrating electronic data with real world environments for the purpose of playing games and gaming on mobile devices; computer programs, downloadable, for providing an all-around view of virtual environments; computer software, downloadable, for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; downloadable comics; downloadable virtual goods, namely, computer programs featuring clothing, footwear, and headwear, bags, art for use in online virtual worlds; downloadable software for exchanging virtual currency within a virtual computer game environment; recorded software for exchanging digital currency within a virtual computer game environment; recorded software for exchanging virtual currency within a virtual computer game environment; downloadable computer software for managing cryptocurrency transactions using blockchain technology; downloadable e-commerce software for effectuating online transactions based on a variety of currencies”
In International Class 16: “Printed materials, namely, manuals, pamphlets, booklets, books, magazines, posters and guides in the field of computer and video games; printed books in the field of computer and video games; Printed comics; graphic prints”
In International Class 25: “Clothing, namely, {specify, e.g. shirts, pants}; Footwear; baseball caps”
In International Class 28: “Hand-held video game consoles; action figures; Toy drones
In International Class 35: “Online retail store services featuring video and computer game hardware and software, clothing, footwear, and headgear; online retail services featuring virtual goods, namely, clothing, footwear, and headwear, bags, art, toys for use in online virtual worlds; online marketing services; provision of an online marketplace for buyers and sellers of goods and services; distributorship services in the field of computer software being game software, video games, computer games, game programs, and virtual goods, namely, namely, footwear, and headwear, bags, art, toys, all for use in online virtual worlds; organisation of exhibitions and events for commercial or advertising purposes provided via computer networks and global communications networks”
In International Class 38: “Provision of access to internet platforms and internet portals for the purpose of online gaming; transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet; providing online forums and instant messaging services for communication in relation to gaming and online gaming; providing access to computer databases in the fields of computer and video games; Telecommunications services, namely, providing electronic message alerts via the internet notifying individuals of {specify activity}; provision of telecommunication access to videos, audio, text, images, and user-generated content provided through a virtual environment via the Internet; provision of access to online virtual environments via the internet; providing access to e-commerce platforms on the internet”
In International Class 41: “Video game entertainment services, namely, providing online non-downloadable video games; rental of video games; providing online computer and video games; providing online interactive computer games; providing information relating to online computer and video games; educational and training services relating to games, namely, providing classes, seminars and workshops in the field of video games, gaming and video game development; Electronic games services provided online from a computer network; providing online entertainment in the nature of computer game tournaments; providing online information to game players about the ranking of their scores; providing online information on computer and video game strategies; online games services provided via computer networks and global communications networks; online games services provided by means of computer terminals and mobile telephone; provision of an online magazine featuring information in the field of computer games; providing online newsletters in the field of computer games via e-mail; video game arcade services; providing on-line non-downloadable comics; organisation of social entertainment and cultural events provided via computer networks and global communications networks; organisation of computer game competitions provided via computer networks and global communications networks”
In International Class 42: “Development of computer and video game software and programs; design of computer and video game software and programs; computer programming of computer and video games; design and development of computer game software; design and development of computer hardware for computer and video games; computer and video game software authoring; computer and video game software installation; computer and video game software maintenance; computer and video game software engineering; design and development of virtual reality software; design and development of virtual reality computer hardware; design and development of interactive multimedia software; rental of computer hardware; software as a service services featuring software for enabling virtual reality viewing of environments; provision of information and consultancy services in relation to all of the aforesaid; rental of computer game programs for playing {specify game, e.g. card games}; rental of computer and computer game software; software as a service (SaaS) services featuring software for {specify function} in the field of computer and video games, virtual and mixed reality environments; platform as a service (PaaS) services featuring software for {specify function} in the field of computer and video games, virtual and mixed reality environments; design, development, and programming of virtual goods software for others; design, development and implementation of software in the field of blockchains; maintenance of software used in the field of e-commerce; hosting of e-commerce platforms of others on the Internet”
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).
B. MARK DESCRIPTION
Applicant must submit a description of the mark, because one was not included in the application. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b). In this case, the drawing of the mark is not in standard characters.
The following description is suggested, if accurate:
The mark consists of a design in the form of a Phoenician samekh.
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