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: 2/22/2019

 

 

 

 

 

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.  

 

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 Results

 

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).

 

Issue Summary

 

Identification of goods and services

 

Description of the mark

 

Identification of Goods and Services

 

The identification of goods and services is indefinite and must be clarified because the uses, common name, function and subject matter  of many of the goods and services is required.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Please note that bolded wording/punctuation indicates a suggested addition(s)/amendment(s) to clarify applicant’s current identification.   In addition, please note that the bracketed entries below require applicant to insert information. The applicant must delete all parenthesis.

 

Applicant may adopt the following wording, if accurate: 

International Class 9

Downloadable computer software applications for [specify function and field of use for software]; coin or counter-freed apparatus in this class namely [specify common commercial name of “apparatus”]; change machines for [specify area of use, e.g. “money”]; computer apparatus for converting video games; computer apparatus for modifying video games; electrical apparatus for use in testing video games; games cartridges for use with electronic games apparatus; memory cartridges for hand-held electronic game apparatus; video game computer programs for use with game apparatus not requiring a separate means of display; video game programs for coin-operated apparatus; computer hardware, software and firmware for [specify function and field of use for software and firmware]; 3D spectacles

International Class 16

Paper and cardboard; paper display cards; printed paper signs; paper banners; printed tickets of paper; letterhead stationery; cards namely [specify type]; calendars; printed matter namely [specify type and subject matter]; promotional flyers featuring [specify subject matter]; printed periodical publications in the field of [specify subject matter]; books in the field of [specify subject matter]; booklets in the field of [specify subject matter]; newspapers; magazines in the field of [specify subject matter]; posters, entertainment guides, printed timetables, booklets and scorecards for games; printed publications relating to children's activities, namely, club magazines, books and illustrated publications; postcards; note books; diaries; desk diaries; desk organizers for stationery; leather covered diaries; wall charts for use as diaries; desk calendars; photographs; stationery; loose-leaf binders containing appointment calendars; ribbons of paper for [specify use, e.g. computer paper]; magnetic letters for stationery; magnetic backings for photographs; adhesives for stationery; adhesive printed stickers; plastic or paper stickers namely decalcomanias; pencil or pen holders; card holders; figurine statuettes of papier mache; miniature models of paper or cardboard; printed door knob hang tags; plastic materials for packaging; printers' type; printing blocks; writing instruments, namely, pencils, pens, rulers, erasers; paper pennants; paper napkins and paper coasters; greeting cards; souvenir bags, booklets and posters of plastic or paper; gift stationery, namely, bags, boxes, wrapping materials and tags of paper or plastic; gift certificates and vouchers of paper or plastic; discount cards, non encoded or magnetic; cards, non  encoded or magnetic, for access control, or information supports bearing personal identification data, or cash dispensers; adhesive security tapes, non encoded or magnetic; cards being computer stationery, non encoded or magnetic.

International Class 25

Clothing namely [specify each item]; footwear; headgear namely [specify each item]; articles of outer clothing namely [specify each item]; articles of sports clothing namely [specify each item]; leisurewear namely [specify each item]; shirts; boots; coats; overalls; shoes; fittings of metal for boots and shoes; shorts; t-shirts; socks; sweaters; caps; hats; scarves; jackets; dressing gowns; pyjamas; sandals; slippers; footwear; boxer shorts; beach clothes namely [specify each item] and shoes; baby boots; romper suits; baby pants and sleep suits; dungarees; braces for clothing namely suspenders; belts; berets; track suits; ties; cravats; aprons; bathrobes; bathing caps and suits; bathing trunks; galoshes; gloves and mittens; headbands being clothing; jerseys; jumpers and knitwear namely [specify each item]; leggings; parkas; shawls; singlets; skirts; vests; visors being headwear; waistcoats; waterproof clothing namely [specify each item]

International Class 26

Ornamental badges for wear, not of precious metal; beads, other than for making jewellery; belt clasps; bows for the hair; brooches for clothing; buckles for clothing; buttons; charms, other than for jewellery, key rings or key chains; embroidery; embroidered fancy goods namely [specify goods].

International Class 28

Games and playthings namely [specify all goods]; gymnastic and sporting articles namely [specify all goods]; coin or counter operated pinball game machines; electronic pinball games machines, other than those adapted for use with an external display screen or monitor; self-contained electronic games apparatus incorporating a liquid crystal display other than those adapted for use with an external display screen or monitor; coin or token operated electronic and electromechanical games; games for adults and children in the nature of [specify type, e.g. “party games”]; games in the form of quizzes; musical games; games of chance; games of dominoes; backgammon games; ball games; chess games; games of cards or darts or dice or rings or role play; golf games; racing car games; rackets for use in games; gloves for games; rotating darts for games; scratch cards for playing lottery games; miniatures for use in games; portable games namely [specify all goods]; markers for playing games; doll mascots; toy masks; balloons; playing balls; puppets; children's playthings namely [specify all goods]; children's punch balls; toys namely [specify all goods]; plush toys; figure and model toys and playthings; battery operated toys; bouncing toys namely [specify all goods]; bath toys; craft toys sold complete; craft kits for games and playthings; cuddly toys; drawing toys; educational toys for [specify purpose]; electronic toys namely [specify all goods]; inflatable toys; metal toys namely [specify all goods]; model toys namely [specify goods, e.g. “namely, model toy animals”]; musical toys; paper toys namely [specify all goods; plastic toys namely [specify all goods]; punching toys; rocking toys namely [specify all goods]; soft toys namely [specify all goods]; spinning toys namely [specify all goods]; toys for babies; toys for use in prams; toys in the form of puzzles; beach toys namely [specify all goods]; play costumes; stuffed toys; inflatable mats for recreational use; beach balls; toy pinball games machines. 

International Class 41

Education namely [specify nature of and subject matter of “education” services]; providing of training in the field of [specify subject matter]; entertainment in the nature of [specify type of “entertainment” services]; sporting and cultural activities namely [specify services and nature of “sporting and cultural” activities]; providing services relating to amusement parks, entertainment and recreational facilities; arranging and organizing events, shows, competitions, contests, live demonstrations or exhibitions, all for entertainment, cultural and educational purposes; production of live entertainment, shows, concerts, stage plays, stage or theatrical performances, musical, dramatic or theatrical entertainment, cinematographic displays, radio programmes, television programmes, exhibition of pictures, photographs or books, audio and video entertainment; sporting and cultural activities namely [specify type of services and type of sport activities]; arranging or organizing of meetings, competitions, conferences, conventions, exhibitions, seminars or workshops for cultural, social, educational, recreational or entertainment purposes

International Class 42

Design of computer programs; computer programming for data processing and communications systems; services for development of computer hardware and software

International Class 43

Restaurant services; bar services; catering services; provision of food and drink; provision of temporary accommodation

Applicant’s goods and/or 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 and/or services or add goods and/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/or 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Description of the mark

 

Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must provide this description.  See TMEP §807.07(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 description is suggested, if accurate:   The mark consists of a three-dimensional configuration of a black and brown bear with white and blue eyes, wearing a yellow, orange and red top hat, red bowtie, and gold and red vest.”

 

RESPONSE TO OFFICE ACTION

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  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 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. 

 

 

 

 

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

 

 

 

 

/John E. Michos/

Trademark Attorney

Law Office 118

USPTO

571 272 9197

john.michos@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 2/22/2019 FOR U.S. APPLICATION SERIAL NO. 88199919

 

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 2/22/2019 (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.