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: 1/7/2019

 

This Office action is supplemental to and supersedes the previous Office action issued on January 7, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently misinformed the application regarding the Foreign Registration Certification Requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issues raised in this Office action.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

·        Identification of Goods and Services Requirement

·        Color Claim & Mark Description Requirement

·        Disclaimer Requirement

·        Foreign Registration Certificate Requirement

 

IDENTIFICATION OF GOODS AND SERVICES

 

Class 9

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Applicant must specify the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

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.

 

Moreover, the wording “game” 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.  Specifically, applicant must specify the type of game.  For example, “computer game”, “video game” and “electronic game” are acceptable type of games.

 

The wording “electronic media featuring computer game program” 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.  Applicant must indicate the form of the electronic media and digital media, such as electronic media devices or digital media devices, which excludes gaming apparatus. 

 

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”.

 

Applicant has classified “game services provided by means of downloadable mobile applications” in International Class 41; however, the proper classification is International Class 9 because “downloadable mobile applications” are not “services”.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class or (2) deleting “game services provided by means of downloadable mobile applications” from the application.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  Further, applicant must specify the function of the software, such as managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the applicant must also indicate the content or field of use.  

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 41 for “game services provided by means of downloadable mobile applications”.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, 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.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Class 42

 

The wording “providing internet security programs” 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.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Moreover, the wording “site maintenance” and “maintenance of web sites for electronic commerce” in the identification of services is indefinite and must be clarified because the services must be specified to indicate that the services are “for others”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services 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.

 

COLOR CLAIM & MARK DESCRIPTION

 

Applicant must clarify whether color is a feature of the mark because although the drawing is in black and white and color is not claimed, the colors black and white are included in the mark description, so it is unclear whether color is a feature of the mark.  37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).

 

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

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

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

 

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).

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

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.

 

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 requirements 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 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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/7/2019 FOR U.S. APPLICATION SERIAL NO. 88168927

 

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 1/7/2019 (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.