To: | Playground Games Limited (docket@hollandhart.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86327017 - PLAYGROUND GAMES - playground g |
Sent: | 10/20/2014 1:55:12 PM |
Sent As: | ECOM118@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86327017
MARK: PLAYGROUND GAMES
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CORRESPONDENT ADDRESS: ESTER MARTÍN MAILLARO |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Playground Games Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 10/20/2014
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 that applicant must address:
The copy of the foreign registration is acceptable.
NO CONFLICTING MARKS:
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).
DISCLAIMER:
Applicant must disclaim the wording “GAMES” because it merely describes a feature of the applicant’s software goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The attached evidence from Onelook.com shows that the term GAMES is the plural of game which refers to an activity providing entertainment or amusement. See attached definition.
Therefore, the wording merely describes a feature of the applicant’s software goods and/or services.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “GAMES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
IDENTIFICATION OF GOODS:
The identification of goods is not acceptable because the wording “entertainment software; interactive entertainment software; application software; sound recordings; video recordings; pre-recorded films; motion picture films” is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the industry or field in which the goods are used or intended to be used.
Applicant may adopt the following identification, if accurate:
Entertainment software, namely, ______ (the applicant must specify the function of the software, for instance, computer game software); interactive entertainment software, namely, ______ (the applicant must specify the function of the software, for instance, computer game software); application software, namely, ______ (the applicant must specify the function of the software, for instance, computer game software); sound recordings, namely, ______ (the applicant must specify the type of recordings, for instance, musical sound recordings); video recordings, namely, ______ (the applicant must specify the type of recordings, for instance, musical video recordings); pre-recorded films featuring _____ (the applicant must specify the subject matter, for instance, children’s entertainment); animated films; motion picture films featuring _____ (the applicant must specify the subject matter, for instance, children’s entertainment), in International Class 9.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
IDENTIFICATIONS OF SERVICES:
The identifications of services are not acceptable because some of the wording in each is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the field of use in which the services are offered.
Applicant may adopt the following identifications, if accurate:
Entertainment software services, namely providing entertainment online and via the internet, namely, ______ (the applicant must specify the type of entertainment, for instance, non-downloadable computer games); provision of entertainment software, namely, _____(the applicant must specify the type of entertainment, for instance, non-downloadable computer games) by means of local computer networks, the internet, cable or wire communications services and wireless telecommunications services; information and advisory and consultancy services relating to all of the foregoing, in International Class 41.
Designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing entertainment software; updating of entertainment software; information and advisory and consultancy services relating to all of the foregoing, in International Class 42.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
RESPONSE:
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
Trademark Examining Attorney
Law Office 118
(571) 272-9291
marlene.bell@uspto.gov (for informal inquiries)
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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.