To: | JINN DIGITAL LLC (abarendse@dbllawyers.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88057417 - VOODOO - 47993 |
Sent: | 4/11/2019 8:57:14 AM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88057417
MARK: VOODOO
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: JINN DIGITAL LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 4/11/2019
It is noted that Application Serial No. 87222366 has abandoned.
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 87381520
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
· VOODOO BUNNY, in standard characters, for “Board games; Card games; Counters and marbles for games; Dice games; Playing cards and card games; Tabletop games” in Class 28 (U.S. Registration No. 4678675)
· VOODOO GRAPHICS, in standard characters, for “Design for others in the field of digital large-format reprographics and apparel; Graphic design; Web site design; Web site development for others” in Class 42 (U.S. Registration No. 4651120)
· CONVERSION VOODOO, in standard characters, for “Optimization of online websites for others; Website design services for others” in Class 42 (U.S. Registration No. 4706038)
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration(s).
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
The applicant’s identification of goods and services are as follows:
· Class 9: Downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glasses allowing users to interact with other users, watch videos and play games through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and entertainment purposes
· Class 28: Gaming equipment, namely, gaming tables and gaming cloths
· Class 41: Providing online augmented reality games; Augmented reality video production; photography, audio recording production, video production
· Class 42: Software as a service (SAAS) services using augmented reality and virtual reality; Providing a website featuring non-downloadable augmented reality and virtual reality software for use on desktop computers, mobile phones, tablets, headwear and other portable electronic devices for recreational, health, business, leisure, marketing, education, or entertainment purposes; software development, illustration, 3D modeling, animation, metrology, photography, audio production, video production and website design Software as a service (SAAS) services featuring software using augmented reality and virtual reality for allowing users to interact with other users, watch videos and play games; Providing a website featuring non-downloadable augmented reality and virtual reality software for allowing users to interact with other users, watch videos and play games for use on desktop computers, mobile phones, tablets, virtual reality headsets and virtual reality glasses for recreational, health, business, leisure, marketing, education, and entertainment purposes; software development, graphic illustration services for others, computer graphics design services in the nature of creating of 3D computer models and animations, metrology; Providing online non-downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glassesallowing users to interact with other users, watch videos and play games through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and entertainment purposes
The highlighted portions of the applicant’s identification of goods and services must be clarified because it fails to describe the underlying nature of the goods and services with sufficient particularity and/or includes goods or services classified in other classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Note that the rest of the identification of goods and services is acceptable in their respective classes.
For goods, applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
For services, applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).
Specifically, “Software as a service (SAAS) services featuring software using augmented reality and virtual reality for allowing users to interact with other users, watch videos and play games”, “Providing online non-downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glassesallowing users to interact with other users, watch videos and play games through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and entertainment purposes” and “Providing a website featuring non-downloadable augmented reality and virtual reality software for allowing users to interact with other users, watch videos and play games for use on desktop computers, mobile phones, tablets, virtual reality headsets and virtual reality glasses for recreational, health, business, leisure, marketing, education, and entertainment purposes” are indefinite, broad, and requires further clarification as “play games” and “watch videos” allude to entertainment services in Class 41, e.g., “Providing online augmented reality games” or “Providing on-line videos featuring {indicate subject matter e.g., music, mathematics instruction, etc.}, not downloadable”.
Accordingly, applicant may adopt any or all of the following identification(s), if accurate:
· CLASS 9: [Acceptable]
· CLASS 28: [Acceptable]
· CLASS 41: Providing online augmented reality games; Augmented reality video production; photography, audio recording production, video production; Providing online non-downloadable augmented reality and virtual reality games and online videos featuring {indicate subject matter} for use on desktop computers, mobile phones, tablets, virtual reality headsets and virtual reality glasses for recreational, health, business, leisure, marketing, education, and entertainment purposes
· CLASS 42: Software as a service (SAAS) services using augmented reality and virtual reality; Providing a website featuring non-downloadable augmented reality and virtual reality software for use on
desktop computers, mobile phones, tablets, headwear and other portable electronic devices for recreational, health, business, leisure, marketing, education, or entertainment purposes; software
development, illustration, 3D modeling, animation, metrology, photography, audio production, video production and website design Software as a service (SAAS) services featuring software using
augmented reality and virtual reality for allowing users to interact with other users, watch videos and play games [Moved to Class 41]; Providing a website featuring
non-downloadable augmented reality and virtual reality software for allowing users to interact with other users, watch videos and play games [Moved to Class 41] for use
on desktop computers, mobile phones, tablets, virtual reality headsets and virtual reality glasses for recreational, health, business, leisure, marketing, education, and entertainment purposes;
software development, graphic illustration services for others, computer graphics design services in the nature of creating of 3D computer models and animations, metrology; Providing online
non-downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glasses allowing users to interact with other users, watch
videos and play games [Moved to Class 41] through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and
entertainment purposes
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. See TMEP §1402.04.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Philip Liu/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 109
(571) 272 - 6792
Philip.Liu@uspto.gov
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.