To: | Kadokawa Corporation (docketing@rankinhill.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87027508 - DREADNOUGHT - NIS-41077 |
Sent: | 8/25/2016 2:38:11 PM |
Sent As: | ECOM105@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. 87027508
MARK: DREADNOUGHT
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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: Kadokawa Corporation
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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: 8/25/2016
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
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.
PRIOR PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Informalities
While applicant is not required to address the potential cite identified above, applicant must respond to the requirement(s) set forth below.
IDENTIFICATION OF GOODS
As identified below, some of the wording in the identification of goods must be clarified to identify the common commercial name of the product associated with the mark. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
The wording could include goods in other international classes for which additional filing fees are required.
Lastly, the identification of goods and/or services contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only 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 of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services. In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
Applicant must address the following issues and may adopt the suggested language, if accurate:
Please note that the suggested language is underlined.
International Class 16 - Pastes and other adhesives for stationery or household purposes; addressing machines; ink ribbons; automatic stamp affixing machines; electric staplers for offices; envelope sealing machines, for offices; stamp obliterating machines; drawing instruments; typewriters; check writing machines; mimeographs; relief duplicating machines; paper shredders; franking machines; rotary duplicators; office requisites, except furniture; pencil sharpeners, electric or non-electric; containers of paper, for packaging; bags of plastics, for packaging; stationery; architects' models; magazines in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); newspapers; printed periodicals in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); magazine books in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); game hint books; series of books in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); comic books; books in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); picture postcards; music score sheets and books; song books; catalogues in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); calendars; printed timetables; geographical maps; dictionaries; diaries; newsletters in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); pamphlets in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); trading cards; publications, namely _________ (Applicant must identify the type of publication, e.g. magazine, etc.) in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); other printed matter namely _________ (Applicant must identify the type of printed matter, e.g. magazine, etc.) in the field of ___________ (Applicant must identify the subject matter of the publication, e.g. games, math, etc.); paintings and calligraphic works; photographs; photograph stands; portraits; sleeves for holding trading cards; parts and fittings for trading cards; sleeves for holding cards for trading card games
International Class 28 - Cards for trading card games; cards for other games; wax for skis; amusement game machines and apparatus for use in amusement parks; toys for domestic pets; toys namely _________ (Applicant must identify the type of toy.); dolls; Go games; Japanese chess; Japanese playing cards; Japanese card game, namely utagaruta; dice; Japanese dice games; dice cups; diamond games namely _________ (Applicant must clarify the type of game.); chess games; checkers; conjuring apparatus namely _________ (Applicant must clarify the type of apparatus.); dominoes; playing cards; mah-jong; game machines and apparatus namely _________ (Applicant must clarify the type of machines, e.g. video game machines, arcade video game machines, etc.); billiard equipment; sports equipment namely _________ (Applicant must identify the type of equipment and classify them correctly if they don’t belong in Class 28, for example sports clothing belongs in class 25.); climbers' harness; sports equipment for surfing, water-skiing and scuba diving namely _________ (Applicant must identify the type of equipment and classify them correctly if they don’t belong in Class 28, for example sports clothing belongs in class 25.); fishing tackle; insect collecting implements namely _________ (Applicant must identify the type of implements and classify them correctly if they don’t belong in Class 28, for example insect collecting cages belong in class 21.); game implements namely _________ (Applicant must identify the type of implement and classify them correctly if they don’t belong in Class 28); parts and fittings for cards for trading card games
Please note that the following items were repeated in the ID and therefore one instance has been deleted in the suggested wording: Japanese playing cards; sports equipment. In addition, the “sleeves for holding cards for trading card games” belong in class 16 and have been moved thereto in the suggested ID.
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.
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.
Insufficient Filing Fees
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
ADDITIONAL INFORMATION
Response Guidelines
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
/Alain J. Lapter/
Trademark Examining Attorney
Law Office 105
500 Dulany Ave.
Alexandria, VA 22316
(571) 272-3162
alain.lapter@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 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.