UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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: 12/8/2018

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’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).

 

SUMMARY OF ISSUES:

• Identification and Classification of Goods and Services
• Mark Description
• Certified Copy of Foreign Registration

 

Identification and Classification of Goods and Services

The wording “Downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, and podcast transcripts in the field of computer and video games” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass downloadable media in International Class 9 as well as the provision of online, non-downloadable media, such as online newspapers and magazines, in International Class 41. Therefore, the applicant must revise this entry to clarify the nature of its magazines and newspapers and classify the goods accordingly.

 

In addition, the wording “Cases for mobile phones, tablets, laptop com-puters and netbooks, portable media players, cameras and other photographic equipment” in the identification of goods is indefinite and must be clarified because the nature of the goods for which the case is intended is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, photographic equipment could refer to cameras, photographic filters, or photographic lenses. Therefore, the applicant must amend this entry to clarify the nature of its cases and goods for which the cases are intended to be used.

 

Furthermore, the following software entries in International Class 9 are unacceptable because the applicant does not clearly indicate the purpose or function of the software: “Downloadable computer application software featuring video and computer games; Computer application software for mo-bile phones, portable media players, tablets, handheld computers and other electronic mobile de-vices namely, software for video and computer games; Computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, software for video and computer games offered via social media”. In particular, the indication that the software is for video or computer games or features video or computer games does not mean that the goods are computer game software. If that is the case, the entries should be amended to so indicate. Otherwise, the entries must be amended to indicate the function being performed, such as “software for accessing computer games”.

 

Moreover, the applicant has classified “Mobile phone accesso-ries and charms, namely, danglers for mobile phones” and “Mobile phone acces-sory charms” in International Class 9. The proper classification for these goods is International Class 26. Therefore, these goods must be amended to the proper international class or deleted from the application.

 

In International Class 41, the following entries are indefinite because the applicant does not specify the specific nature or type of service being rendered: “Entertainment, namely, providing online games” and “amusement parks”. For example, providing online games could be the service of providing online computer games or online card games. Similarly, “amusement parks” could refer to the provision of “amusement park services” or “amusement park rides”. Therefore, where indicated, the applicant must revise these entries to clarify the nature of the service being provided.

 

The wording “Writing of texts for others” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass writing of publicity texts for others in International Class 35 as well as writing of articles and journals for others, other than for advertising or publicity in International Class 41. Thus, the applicant must revise this entry to clarify the nature of the services being performed and classify the services accordingly.

 

Additionally, the following services are grammatically unclear and, thus, indefinite: “Entertainment services, namely, production of live, televised and movie appearances by a professional entertainer” and “non-downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, blogs, and podcasts and mobile applications in the field of games”. In particular, the production of appearances makes it unclear if the applicant is providing a multimedia production service or, instead, making appearances. Similarly, the indication that the applicant is providing a non-downloadable publication in the nature of a mobile application is grammatically unclear as mobile applications are not publications and are generally downloaded on a device. Therefore, where indicated, the applicant must revise these entries to clarify the nature of the applicant’s services.

 

Lastly, several entries in the identification of goods and services contain terms that contain an unnecessary hyphen, such as “down-loadable”, “transmis-sion”, and “de-vices”. The applicant has corrected the spelling of these terms in the suggestion below. The applicant should note that the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  

 

The examining attorney has indicated below using “{ }” where the applicant must be specific. In addition, the examining attorney has bolded and underlined additions to the applicant’s original identification of goods.

 

Applicant may adopt the following identification of goods and services, if accurate:

 

Class 009:       Downloadable computer game software for video and computer games; Downloadable computer game programs offered via social media; Computer peripheral devices; Downloadable image files containing photographic images and artwork, and text in the field of video and computer games; Downloadable image files containing photographic images and artwork, and text in the field of video and computer games offered via social media; Downloadable music files; Downloadable ring tones for mobile phones; Downloadable electronic publications in the nature of e-books, electronic journals, and podcast transcripts in the field of computer and video games; Headphones; Musical juke boxes; Microphones; Baby monitors; Mouse pads; Portable media players; Portable telephones; Sound recording, transmitting and reproduction apparatus; Spectacle cases; Spectacle frames; Sunglasses; Telephone apparatus; Blank USB flash drives; Video game cartridges; Protective cases and covers specially adapted for mobile phones, tablet computers, laptop computers and netbooks, portable media players, cameras and other photographic equipment, namely, photographic filters; Downloadable electronic game software for use on mobile phones, tablets and other electronic mobile devices; Video game software; Downloadable interactive multimedia computer game programs; Downloadable interactive multimedia computer game programs offered via social media; Downloadable computer software for mobile phones, tablets and other electronic mobile devices in the field of social media for the creation and exchange of user-generated content, marketing research, and also for transmission of electronic communications and also for posting advertisements; Downloadable software in the nature of a mobile application for use in the field of social media for the creation and exchange of user-generated content, marketing research, and also for transmission of electronic communications and also for posting advertisements; Downloadable computer application software in the nature of video and computer game software; Computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices, namely, video and computer game software; Computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, video and computer game software offered via social media; Eyewear; Eyeglasses; Mobile phone covers; Radios incorporating alarm clocks

 

Class 026:       Mobile phone accessory charms, namely, danglers for mobile phones; Mobile phone accessory charms

 

Class 035:       Writing of publicity texts for others

 

Class 041:       Providing non-downloadable electronic publications in the nature of online magazines and online newspapers in the field of computer and video games; Educational services, namely, conducting classes, seminars, and workshops in the field of games; Training in the field of games; Entertainment, namely, providing online {specify type, e.g., computer} games; Entertainment, namely, providing online computer games available on social media; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Entertainment, namely, providing non-downloadable computer games online; Entertainment services, namely, providing online video games available on social media; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing temporary use of non-downloadable electronic games; Entertainment services, namely, providing a website featuring games and puzzles; Entertainment services, namely, providing online video games; Organizing sporting and cultural activities, namely, conducting tournaments, contests and competitions in the field of computer games; Amusement park services; Arranging and conducting workshops for educational purposes in the fields of computers, graphic arts and video games; Entertainment services in the nature of providing casino and gambling facilities; Electronic desktop publishing; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Film production services, other than advertising films; Gambling services; Providing online computer games via a computer network; Operating lotteries; Organization of electronic games competitions; Party planning services for others; Production of music; Entertainment, namely, production of television shows; Providing amusement arcade services; Hosting social entertainment events, namely, karaoke parties for others; Providing online, non-downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, blogs, and podcasts in the field of games; Publication of books; Publication of electronic books and journals on-line; Scriptwriting services for non-advertising purposes; Writing of texts for others, namely, articles for journals, other than for advertising or publicity; Electronic games services provided by means of a global computer network; Entertainment services, namely, providing online electronic games; Entertainment information; Entertainment services, namely, providing online electronic games for use on mobile phones, tablets and other electronic mobile devices; providing information on-line relating to computer games and computer enhancements for computer games; Entertainment services, namely, providing temporary use of non-downloadable single and multi-player electronic interactive games via the internet, electronic communication networks and via a global computer network; Entertainment services, namely, providing temporary use of non-downloadable single and multi-player electronic interactive games via the internet, electronic communication networks and via a global computer network and on social media; Multimedia publishing of software, specifically of computer game software, electronic games and video game software

 

If applicant adopts the suggested amendment of the identification of goods and services, then applicant must amend the classification to International Classes 9, 26, 35, and 41.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

Multi-Class Application Requirements

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only two (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).

 

See 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.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

Mark Description

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of the words “CANDY CRUSH FRIENDS SAGA” in stylized lettering. The word “CANDY” and “CRUSH” are in the same text, with a heart in between the words. The word “FRIENDS” is bold text in a banner under the wording “CANDY CRUSH.” The word “SAGA” is in smaller bold text in the bottom right of the mark.

 

Certified Copy of Foreign Registration

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

 

Taylor Singer

/Taylor Singer/

Examining Attorney

Law Office 126

(571)270-3964

taylor.singer1@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/8/2018 FOR U.S. APPLICATION SERIAL NO. 88085997

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 12/8/2018 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.