UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 1/31/2017

 

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.  

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUE APPLICANT MUST ADDRESS:  On January 26, 2017, the trademark examining attorney and Matthew Kuykendall discussed the issue below.  Applicant must timely respond to this issue.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

Identification of Goods—International Class 28

The identification of goods and services in Classes 9 and 41 is acceptable.  However, the identification in Class 28 is unacceptable because it includes indefinite wording.  TMEP §1402.01.  Specifically, the wording “toys” is unacceptable as indefinite.  The applicant must amend the identification to list the specific toy items.

 

Advisory Regarding Implementation of New Nice Agreement

Effective January 1, 2017, the Eleventh Edition, version 2017 of the Nice Agreement changed the classification of certain goods and services used in identifications.  See Nice Classification, 11th ed., version 2017 (“Nice 11-2017”); TMEP §1401.02(a). 

In the present case, the applicant’s identification includes “virtual reality headsets for use in playing video games and using video game software” in Class 28.  While this wording is acceptable in the identification, as it complies with the edition of the Nice Agreement in effect at the time the application was filed, under the new/current edition of the Agreement, all virtual reality headsets are classified in Class 9, regardless of their purpose.

 

Applications filed prior to January 1, 2017 must comply with the edition of the Nice Agreement in effect as of the application filing date; however, applicants of such applications may voluntarily choose to comply with the new edition.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new edition, the entire identification must comply with this edition.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09. 

In the present case, the applicant may wish to transfer the virtual reality headsets to International Class 9, as this represents the current classification for these goods.  While the identification suggestions below reflect this reclassification, reclassification is not required.

The applicant must amend the application to adopt an acceptable identification of goods and services.  The applicant may amend to adopt one or both of the following identifications, if accurate:

INTERNATIONAL CLASS 9:  Video game software; computer software for interactive games; virtual reality headsets for use in playing video games and using video game software.

INTERNATIONAL CLASS 28:  Toys, namely, [list specific toys; e.g., transforming robotic toys, toy vehicles]; dolls; card games; board games.

INTERNATIONAL CLASS 41 [unchanged]: Entertainment services, namely, providing an online interactive video game via electronic, optical, and wireless communications networks; entertainment services, namely, providing temporary use of non-downloadable interactive video games via electronic, optical, and wireless communications networks.

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Partial Abandonment if No Response to Office Action

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 28 will be deleted from the application: toys. The application will then proceed with the goods and services as identified in Classes 9 and 41 and the following goods in International Class 28:  dolls; card games; board games; virtual reality headsets for use in playing video games and using video game software.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(p)571-272-9430

(f) 571-273-9430

(e) kimberly.frye@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.