To: | Kabushiki Kaisha Square Enix Holdings (trademarks@hblaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85411360 - FINAL FANTASY VERSUS XIII - 309848. |
Sent: | 11/19/11 7:34:32 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85411360
MARK: FINAL FANTASY VERSUS XIII
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Kabushiki Kaisha Square Enix Holdings
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 11/19/2011
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.
PLEASE NOTE: If applicant wishes to amend the wording “hand held video game units” in the identification of goods in Class 28 to one or more of the suggestions below, then all of the issues raised can be resolved by telephone. The applicant is encouraged to telephone the examining attorney, instead of submitting a written response, to expedite the application.
REQUIREMENTS – IDENTIFICATION, CLASSIFICATION
The wording “hand held video game units” in the identification of goods in Class 28 is unacceptable and must be amended.[1] It is unacceptable because it is indefinite in that it does not describe the goods with sufficient specificity and is too broad in that the goods may be classified in more than one classification. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See TMEP §§1402.01, 1402.03. See suggestions below.
An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application. The United States follows the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization, to classify goods and services. 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04. The Manual usually is updated each week. Applicants and attorneys may make suggestions to be accepted and included in the Identification Manual by emailing TMIDSUGGEST@uspto.gov.
Hand-held units for playing video games for use with external display screen or monitor; OR
Hand held joy stick units for playing video games; OR
Class 28
Hand held units for playing video games other than those adapted for use with an external display screen or monitor
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
SEARCH
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).
/Mary Rossman/, Trademark Attorney
Law Office 109
Phone: 571 272 9213
mary.rossman@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.
[1] The examining attorney notes that this wording was accepted in some applications that issued to registrations owned by applicant. However, identifications of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. See TMEP §§702.03(a)(iv), 1402.14. Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date. The Office periodically revises its international classification system and the policy regarding acceptable identifications of goods and services. 37 C.F.R. §2.85(e)(1); TMEP §1402.14.