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: 3/4/2019

 

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.

 

SUMMARY OF ISSUES:

• Prior- Filed Application
• Identification of Goods and Services – Partial Requirement
• Inquiry Regarding Intent to Perfect to §44(e) – Option to Delete 1(b) basis

 

PRIOR-FILED APPLICATION(S)

 

The filing date of pending U.S. Application Serial No. 86703240 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF GOODS AND SERVICES – PARTIAL REQUIREMENT

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The wording in the identification of goods and services identified with corrections below is indefinite and must be clarified for the reasons indicated.  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 goods, and/or specify the specific application of the 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.

 

Additionally, the wording “interactive computer game and video game software” and “downloadable interactive computer game and video game software and programs” appear twice in the identification of goods in Class 9. The duplicate entries are indicated below.

 

Applicant may substitute the following wording in bold, if accurate (please specify where indicated in brackets below):

 

Class 9

 

Games software; computer game software; video game software; electronic computer game and video game software; interactive computer game and video game software; virtual reality computer game and video game software; interactive computer game and video game software; interactive electronic computer game and video game software; computer game and video game programs; electronic computer game and video game programs; interactive computer game and video game programs; virtual reality computer game and video game programs; downloadable computer and video game software and programs; downloadable electronic computer game and video game software and programs; downloadable interactive computer game and video game software and programs; downloadable virtual reality computer game and video game software and programs; downloadable interactive computer game and video game software and programs; interactive multimedia computer game and video game programs and software

 

Class 38

 

Providing user access to gaming websites via a global computer network; transmission of computer games, video games, electronic games and interactive games via the internet, computer networks and electronic communication networks

 

 

Class 41

 

Entertainment services, namely, providing on-line computer games, video games, electronic computer and video games, interactive computer and video games, virtual reality computer and video games, multiple player computer and video games; Gaming services in the nature of {specify, e.g. casino gambling, conducting online computer game tournaments, etc.}; Online gaming services in the nature of {specify, e.g. providing online poker games, providing online non-downloadable game software, providing online board games}; Computer gaming services in the nature of {specify, e.g. rental of computer game software, providing a computer game for use network-wide by network users, conducting online computer game tournaments, etc.}; Arranging of online gaming, namely, {indicate nature of the services, e.g. organizing online computer game tournaments, etc.}; arranging and organising of computer gaming events, competitions and tournaments; arranging and organising of on-line gaming events, competitions and tournaments; Entertainment services, namely, providing online video games; video game arcade services; Electronic games services provided by means of the internet; rental of video and computer games; provision of online computer games; provision of online video games; provision of online interactive computer and video games; Arranging, and organizing multiple player games for others; provision of online interactive computer games; providing information relating to computer games and computer enhancements for games; providing information to game players about ranking and scores in respect of gaming; Providing a web-based system and on-line portal for customers to participate in on-line gaming, and gaming leagues for recreational computer game playing purposes; {Specify nature of the game, e.g. virtual reality game, computer game, video game} services provided online from a computer network; providing online information on computer and video game strategies; electronic games services in the nature of computer games provided online of by means of a computer network; provision of online information in the field of computer games; providing interactive multi-player computer games via the internet and electronic communication networks; Provision of computer and video game arenas for hosting gaming tournaments; organisation of parties and events in respect of computer and video gaming; organisation of parties and events in a computer and video game arena

 

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

 

INQUIRY REGARDING INTENT TO PERFECT TO §44(e) – OPTION TO DELETE 1(B)

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign application under Section 44(d). See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, Applicant submitted a valid foreign registration which alone may serve as a basis for obtaining a U.S. registration under Section 44(e). If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis, and amend the application to Section 44(e).  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

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.

 

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.  

 

 

 

Moskowitz, Samantha

/Samantha J. Moskowitz/

Trademark Examining Attorney

Law Office 127

571-272-3183

samantha.moskowitz@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 3/4/2019 FOR U.S. APPLICATION SERIAL NO. 88202137

 

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 3/4/2019 (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.