Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and to ESTTA for an appeal appears at the end of this office action. 

 

Issue date:  September 09, 2019

 

This office action is in response to applicant’s communications filed on July 19, 2019 and August 9, 2019.

 

The attorney information is accepted and has been entered into the application record.

 

The Section 2(d) refusals and potential refusals are withdrawn.

 

Applicant Must Amend The Identification

 

Applicant must clarify the word “expos” in the identification, as shown below, because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The word is indefinite because it does not make clear the exact nature of the services. Further, it is overly broad because it encompasses services in more than one international class.

 

The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed. Wording that should be deleted is shown with a line through it as follows: strikethrough. Applicant should enter amendments in standard font, not in bold, italics or strikethrough.

 

Applicant may adopt the following identification, if accurate:

 

“Entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic game sound tracks; video recordings featuring electronic game tournaments; pre-recorded motion picture films featuring electronic game tournaments; animated motion picture films featuring electronic game tournaments; motion picture films featuring electronic game tournaments,” in International Class 9;

 

“Providing business expositions relating to video games,” in International Class 35;

 

Entertainment services, namely, providing online non-downloadable electronic games; provision of entertainment software, namely, online non-downloadable electronic game software; providing entertainment information on video games, computer games and related products, and on the video game and computer game industries; providing non-downloadable online videos in the field of video games by computer networks; providing educational and instructional services, namely, classes, seminars, educational expositions, and conferences, relating to video games and providing information about video games; entertainment services, namely, providing online electronic games; providing non-downloadable online electronic publications, namely, online journals and interactive online logs featuring user generated or specified content in the field of video games; providing non-downloadable online music by computer networks; providing non-downloadable online games by computer network; providing temporary use of non-downloadable electronic games; information, advisory, and consultancy services relating to all of the foregoing,” in International Class 41; and

 

“Computer software design; designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing of entertainment software; design, programming, and maintenance of software for consumer video games; updating of entertainment software; information, advisory and consultancy services relating to all of the foregoing,” in International Class 42.

 

The requirement for an acceptable, amended identification is continued and now made final.

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification. However, applicant may not substitute different goods or services or add goods or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods or services will further limit scope, and once goods or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable ID 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 of the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 classes. However, applicant submitted a fee sufficient for only three 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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

TEAS RF Application Requirements

 

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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

 

RESPONSE GUIDANCE

 

• How to respond: click to file a response to this final office action and/or file an appeal to the Trademark Trial and Appeal Board (TTAB).

 

• Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight eastern time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

 

·         If needed, find contact information for the supervisor of the law office referenced in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 09, 2019 for

U.S. Trademark Application Serial No. 88177012

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”