To: | Bluehole, Inc. (sbarrese@dilworthbarrese.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88168927 - KRAFTON GAME UNION - 587-932 |
Sent: | 1/7/2019 1:59:18 PM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88168927
MARK: KRAFTON GAME UNION
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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: Bluehole, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 1/7/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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).
· Identification of Goods and Services Requirement
· Color Claim & Mark Description Requirement
· Disclaimer Requirement
· Foreign Registration Certificate Requirement
IDENTIFICATION OF GOODS AND SERVICES
Class 9
Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. TMEP §1402.03(d). However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
For example, the following are acceptable identifications for software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” Finally, the following are acceptable identifications for non-downloadable game software in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
The wording “tablet terminal” in the identification of goods is indefinite and must be clarified because the nature of the goods are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Thus, applicant must specify the nature of the goods.
Class 41
The wording “game” in the identification of services is indefinite and must be clarified because the nature of the goods are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must specify the type of game. For example, “computer game”, “video game” and “electronic game” are acceptable type of games.
Moreover, the wording “game services” or “gaming services” in the identification of services is indefinite and must be clarified because the nature of the services are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the identification of services as “gaming services” may include “gaming services in the nature of casino gaming”, “electronic games services provided by means of the internet”, “rental of video games” and more, all in International class 41. Therefore, applicant must specify the type of “gaming services”.
Class 42
Applicant may substitute the following wording, if accurate (suggested wording in bold, suggested deletions in strikethroughs):
Class 9 Downloadable virtual reality game software; downloadable computer software for personal information management; downloadable computer game software via a global computer network and wireless devices; computer game software downloadable from a global computer network; downloadable computer programs for pre-recording sports games; downloadable computer application software for mobile phones, namely, smart phone application software for mobile games; downloadable electronic game software for use on mobile phones; recorded computer game software for mobile phones; electronic circuits recording programs for amusement apparatus for use with liquid crystal screens; downloadable interactive multimedia computer game programs; downloadable software for processing images, graphics and text; downloadable software for compressing image and sound; downloadable computer programs for editing images, sound and video; downloadable computer software for controlling the operation of audio and video devices; downloadable electronic game programs, provided from online; downloadable interactive game programs; downloadable computer game software; downloadable computer firmware for playing games, on any computerized platform, including mobile devices, personal computers, computer servers, and gaming consoles; Pre-recorded electronic media devices featuring computer game program, excluding gaming apparatus; tablet terminal in the nature of computer terminals; mouse pads; computer mouse; headsets for use with computers; computer keyboards; downloadable mobile application for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}
Class 41 Providing information and
analysis in the field of electronic game competitions; provision of information relating to computer games; Entertainment services, namely, providing online video gaming services; amusement arcade services; provision of information relating to arcade game; game services
provided by means of downloadable mobile applications; provision of information relating to electronic games services; provision of facilities for playing video games;
provision of information relating to electronic games; Entertainment services, namely, providing an on-line electronic game from a
mobile phone network; Entertainment services, namely, arranging and conducting of mobile game competitions; game services provided by means of downloadable mobile
application; Entertainment services, namely, providing temporary use of non-downloadable electronic games services through mobile game applications; Entertainment services, namely, providing online electronic game services provided via a mobile applications; Entertainment services, namely,
providing online electronic games in mobile game services wireless form; Entertainment services, namely, providing an on-line computer game;
Providing information relating to electronic computer game contents via online; providing on-line computer games; Entertainment services, namely, providing
temporary use of non-downloadable computer games; electronic games services provided by means of the internet
Class 42 Development of game software; programming of
multimedia applications; managing web sites for others; web site design; maintenance of web sites for others; creating and maintaining web sites for others ; hosting computer web
sites; providing search engines for the internet; Providing temporary use of a web-based software application for use in internet security; maintenance of web sites for others in the field of electronic commerce; development of computer game software; maintenance of computer game
software; Computer programming of computer game programming; computer software development; computer software design; computer software consultancy; design of computer
software; installation of computer software; repair of computer software; updating of computer software
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.
COLOR CLAIM & MARK DESCRIPTION
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate (suggested wording in bold, suggested deletions in strikethroughs):
The mark consists of a black line or bar over the stylized wording
"KRAFTON"; below the wording “KRAFTON” is a pentagon shape that points down with the stylized wording "GAME UNION” inside the
pentagon.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate (suggested wording in bold, suggested deletions in strikethroughs):
Color claim: The colors black and white are claimed as a feature of the mark.
Description: The mark consists of a black line or bar over
the stylized wording "KRAFTON" in black; below the wording “KRAFTON” is a black pentagon shape that points down with the stylized
wording "GAME UNION” in white inside the pentagon. The background is in the color white.
See TMEP §807.07(b).
DISCLAIMER
In this case, applicant must disclaim the wording “GAME” because it is not inherently distinctive. These unregistrable term at best is merely descriptive of a feature of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). Specifically, this wording appears in applicant’s identification of goods and services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GAME” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 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).
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each requirement in this Office action. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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.
/Joanna Han/
Joanna Han
Trademark Examining Attorney
Law Office 126
(571) 270-3617
joanna.han@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.