Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

NOTICE OF DIVISIONAL REQUEST COMPLETED

ISSUE/MAILING DATE: 3/13/2018

U.S. Serial Number 87347734

The request to divide application serial no. 87347734 filed on February 28, 2018 has been processed as follows:

(1)    Parent (original) application serial no. 87347734 contains the following goods and/or services and/or class(es):  

42 (Providing temporary use of on-line non-downloadable software for editing, modifying, compiling, storing and sharing video; providing information, advisory and consultancy services in connection with the aforementioned services). 

To avoid abandonment, applicant must continue to file requests for extension of time to file a statement of use (extension requests) or a statement of use within the six-month period after the issuance of the notice of allowance or before expiration of a previously granted extension period.  37 C.F.R. §§2.88(a), 2.89(a)-(b).

(2)    Child application serial no. 87977012 contains the following goods and/or services and/or class(es):

9 (Interactive entertainment software, namely, computer and video game software; downloadable computer software, namely, computer and video game software; electronic downloadable publications in the nature of manuals and user guides in the field of computer software; data recorded electronically from the Internet, namely, downloadable audio files and downloadable video recordings featuring computer and video game play; applications downloadable from a website, namely, downloadable computer and video game software; electronic game programs; software for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, video-graphic and written data, namely, software for managing computer and video games for use in social networking; computer software for gathering, processing, monitoring, analyzing, managing and reporting information, namely, database management software and computer antivirus software; computer software for gathering, processing, monitoring, analyzing, managing and reporting information concerning usage and performance of software, computer software applications, computer and video games, websites, virtual worlds and audio visual content for use in the field of computer software design and computer game programming; computer software for gathering, processing, analyzing, managing and reporting information concerning online, Internet and web site activity, namely, database management software and computer antivirus software; electronic notice boards; computer game software for use on mobile telephones; fitted plastic covers known as skins for protecting mobile telephones, mobile telephone cases and mobile telephone covers; pre-paid gift and debit cards that are magnetically encoded; computer software to enable uploading, downloading, accessing, posting, displaying, editing and blogging of electronic media and information via computer and communication networks; software for sending and receiving electronic messages, graphics, images and audio and audio visual content via global communication networks; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for editing, modifying, compiling, storing and sharing video; virtual reality headsets).

28 (Toy vehicles; toy action figures and accessories therefor; plastic character toys; rubber character toys; plush dolls; construction toys; stuffed toys; toy figures and accessories therefor; molded toy figures; toy cars; toy sporting equipment, namely, toy dart projectile shooters and toy darts for use therewith; toy ball projectile shooters and toy balls for use therewith; card games; board games; toy boxing playsets and accessories therefor; games and toys, namely, toy figures featuring radio frequency identification (RFID) chips and tags therein; action figures featuring radio frequency identification (RFID) chips and tags therein; collectible board game pieces; puzzles; toy armor, namely, shields).

41 (Entertainment and education services, namely, providing online electronic, computer and video games by means of the Internet; online video and computer game services provided via a global computer network; organizing computer and video game competitions; providing non-downloadable games and educational entertainment services, namely, providing online computer games and providing temporary use of non-downloadable video games; education and entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means, namely, providing online computer games; entertainment services, namely, preparation of special effects and editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; multimedia publishing of computer and video games and computer and video games software; multimedia publishing of entertainment and educational software; arranging, organizing and conducting conferences and seminars about computer software and video games for educational purposes; entertainment services in the form of a continuing program about computer and video games accessible via television, radio, cable, satellite and Internet; production and presentation of television programs, radio shows, films and videos about computer and video games; providing a website featuring online non-downloadable computer and video game software; providing online computer and video games; magazine and newspaper publishing; organization, production and presentation of events for educational, cultural and entertainment purposes, namely, organizing and conducting computer game competitions and educational conventions; organizing computer games for education purposes; providing Internet-based games, namely, providing online computer games and providing online video games; providing information, advisory and consultancy services in connection with the aforementioned services; educational services relating to entertainment, namely, providing entertainment information about online non-downloadable computer and video games; providing on-line information about entertainment and education from a computer database accessible via the Internet, communications satellite and microwave transmission). 

A statement of use filed on February 28, 2018 meets the minimum filing requirements and has been placed in the child application.  The statement of use will be routed to the examining attorney for examination and, if it does not meet all the statutory requirements, the examining attorney will notify the applicant.

37 C.F.R. §2.87; see TMEP §§1110 et seq. 

Please call the undersigned with any questions.

/Diane T. Jones/

Diane T. Jones

Paralegal Specialist

ITU/Divisional Unit

Phone number 571-272-9504

Fax number 571-273-9504

diane.jones@uspto.gov

NO RESPONSE TO THIS NOTICE IS REQUIRED.

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 Status and Document Retrieval (TSDR) at http://tsdr.gov.uspto.report/. Please keep a copy of the complete status screen.  If TSDR 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/trademarks/teas/correspondence.jsp.

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 $125 per 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 or e-mail without incurring this additional fee.  

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.