To: | Gaming Partners International Corporatio ETC. (TRADEMARKSLV@DICKINSONWRIGHT.COM) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88078410 - SMART - 075518-70304 |
Sent: | 11/26/2018 7:36:21 AM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88078410
MARK: SMART
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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: Gaming Partners International Corporatio ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
SECOND 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. 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: 11/26/2018
This second non-final Office Action is in response to applicant’s communication filed on November 20, 2018. In the initial Office Action issued on September 12, 2018, the examining attorney refused registration of applicant’s mark under Section 2(e)(1) of the Trademark Act, finding the mark to be descriptive of the goods and services. The examining attorney also indicated that applicant submitted an identification with definite goods and services, but placed them only in Class 9, and would need to separate the goods and services and submit a fee for the additional class. Applicant was also given an advisory that if Class 42 was formally added to the application, a specimen of use would be required for the Class.
In its response, applicant has amended its application to seek registration on the Supplemental Register. Applicant has also submitted the fee required for an additional class. Applicant’s amendment to the Supplemental Register and the submission of an additional fee are acceptable. However, applicant did not provide an amended identification of goods and services with proper classification and did not submit a specimen to support the services in Class 42 (which presumably will be formally added to the application). Consequently, these issues are reiterated below.
Fee Submitted but Classification Unchanged / Classification/Identification Amendment Required
Class 9: RFID readers for use in connection with electronic counterfeit casino currency detection; electronic device for use in connection with electronic counterfeit casino currency detection in the nature of a RFID reader; currency counting machines for use in casinos; counterfeit money detection device in the nature of a currency recognition machine for the purpose of authenticating RFID chips in currency; electronic device for pursuing and recording casino chips on casino tables; device for verifying casino chips on casino tables in the nature of scanners and RFID readers; computer hardware for use in connection with preventing cheating in casino games; computer software for use in connection with preventing cheating in casino games, namely, software for monitoring casino currency inventory and detecting counterfeit currency; electronic security equipment relating to chips for casino gambling, namely, checking equipment in the nature of scanners and RFID readers for determining quality and integrity of chips for casino gambling, counting equipment in the nature of scanners and RFID readers to prevent theft and loss of chips for casino gambling, monitoring equipment in the nature of scanners and RFID readers for identifying movement of chips for casino gambling, ID verification equipment in the nature of scanners and RFID readers for chips for casino gambling, counting equipment in the nature of scanners and RFID readers for chips for casino gambling, video camera security equipment for chips for casino gambling, cheating act surveillance equipment in the nature of cameras, scanners, and video monitors relating to tracking of chips for casino gambling; computer software for verification of movement of chips for casino gambling; computer software for verification of distribution and calculation of chips for casino gambling.
Class 42: Design and implementation of software and technology solutions for the purpose of casino currency authentication and tracking to protect against counterfeiting, tampering, and diversion, and to ensure the integrity of the casino currency; information security services, namely, RFID authentication services; Fraud detection services, namely, monitoring, detecting and preventing counterfeit currency through RFID technology
Specimen Omitted
In the Office Action issued on September 12, 2018, the examining attorney advised applicant that if Class 42 was added to the application, applicant would need to submit a specimen of use for these services. Applicant submitted a fee for adding a second class to its application, but did not formally add the services, and did not submit any additional specimen.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified specimen that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application. A “verified specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.” The specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.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.
Assistance
/Jordan A. Baker/
Trademark Examining Attorney
Law Office 124
571-272-8844
jordan.baker@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.