Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  September 10, 2019

 

 

PREVIOUS ACTIONS: In a previous Office action dated February 15, 2019, applicant was required to satisfy the following requirements: requirements to amend classification and identification of goods and services, amend color claim and description of the mark, disclaim descriptive wording in the mark, provide signature and declaration mark and provide a foreign registration certificate.

 

Based on applicant’s response on August 9, 2019, the trademark examining attorney notes that the following requirements have been satisfied: requirement to provide signature and declaration, requirement to amend color claim and description of the mark and requirement to disclaim descriptive wording in the mark.  See TMEP §§713.02, 714.04. 

In addition, although applicant amended the identification of goods and services as required, specific wording in the identification requires further clarification.  Furthermore, applicant advised the trademark examining attorney that a foreign registration certificate has not yet issued.  Therefore, the requirements to amend the identification of goods and services and provide a foreign registration certificate are continued and maintained.  Moreover, the application is suspended, as specified below, until submission of the foreign registration certificate.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

Requirements resolved and maintained and continued.  The following requirements are satisfied: 

 

• Requirement to provide signature and declaration
• Requirement to amend color claim and description of the mark
• Requirement to disclaim descriptive wording in the mark

 

See TMEP §713.02.

 

The following requirements are maintained and continued: 

 

•        Requirement to Amend Classification/Identification of Goods and Services

•        Requirement to Provide Foreign Registration Certificate

 

See id.  These requirements will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

REQUIREMENT TO AMEND CLASSIFICATION/IDENTIFICATION OF GOODS AND SERVICES CONTINUED AND MAINTAINED

 

In the previous action, applicant was required to amend the identification of goods and services because it was indefinite and too broad.  Although applicant amended the identification, specific wording, where noted below, requires additional clarification.

 

Applicant may substitute the following wording, if accurate (proposed amendments in bold):

 

International Class 9: downloadable computer software to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters; recorded computer software to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters; downloadable application software to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters; recorded application software to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters; downloadable computer software and application software to create, edit, store, operate, manipulate, record and publish virtual characters; downloadable computer game programs for arcade video game machines; recorded computer game programs for arcade video game machines; personal digital assistants in the shape of a watch; smartphones; downloadable computer game programs for home video game machines; downloadable interactive game programs for home video game machines; recorded computer game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; electronic downloadable publications, namely, e-zines, books, magazines, manuals featuring computer games, motion pictures, movies, animation, animated films, animated cartoons and virtual characters; downloadable computer software and application software to create, edit, store, record, transmit, publish and stream live video performance and virtual video performance on the world wide web, telecommunication network and computer network; downloadable virtual reality computer software to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters; downloadable computer game software; recorded computer game software; downloadable computer game programs; recorded computer game programs; downloadable computer game programs for mobile phones and mobile computer terminals; downloadable virtual reality game software; audio and video recordings featuring music, motion pictures, movies, animation, animated films, animated cartoons, virtual characters and games; downloadable image files, namely, still images and video featuring music, motion pictures, movies, animation, animated films, animated cartoons, virtual characters and games; downloadable music files, downloadable audio files featuring music, motion pictures, movies, animation, animated films, animated cartoons, virtual characters and games; video files and image files featuring music, motion pictures, movies, animation, animated films, animated cartoons, virtual characters and games, downloadable via the Internet; video recordings featuring music, motion pictures, movies, animation, animated films, animated cartoons, virtual characters and games; virtual reality headsets; virtual reality glasses

 

International Class 35: Internet advertising services; advertising and publicity services; providing advertising space on the internet; promoting the goods and services of others through the administration of sales and promotional incentive schemes involving trading stamps; business management analysis and business consultancy; marketing research and conducting marketing studies; providing information concerning commercial sales; business administration of hotels; providing employment information; organization and management of trade fairs for advertising purposes; promoting the goods and services of others; providing information and advice to consumers regarding the selection of products and items to be purchased; compilation of information into computer databases; rental of publicity and marketing presentation materials; on-line retail store services featuring physical and virtual merchandise for use by members of an online community in connection with a designated website featuring virtual characters

International Class 38: Streaming of video material on the Internet; video streaming services via the Internet, featuring motion pictures, movies, games, animation, animated films, animated cartoons and virtual characters; telecommunications consultation; telecommunications gateway services; audio broadcasting; video broadcasting; television broadcasting; radio broadcasting; internet radio broadcasting; providing multiple-user access to a global computer network; data communication by electronic mail systems; providing internet chatrooms; electronic bulletin board services; computer aided transmission of messages and images; streaming of data; teleconferencing services; data transmission and reception services via telecommunication means of audio, video, still and moving images, text and data via the internet, wireless communication networks and cable television; broadcasting of audio, video; electronic transmission of still and moving images, text and data by video broadcasting; data transmission and reception services via telecommunications means of audio, video, still and moving images, text and data in real time via the internet, wireless communication networks and cable television; broadcasting of audio, video {delete as duplicate or provide further clarification, e.g., broadcasting of audio and video over the Internet}; electronic transmission of still and moving images, text and data in real time by video broadcasting; providing on-line forums for {indicate field or subject of forum, e.g., transmission of messages among computer users}

International Class 41: Entertainment services, namely, providing virtual environment where users can interact for the purposes of recreation; Entertainment services, namely, providing on-line, non-downloadable virtual characters for use in virtual environments created for entertainment purposes; educational and instruction services, namely, providing classes, seminars, tutoring, mentoring relating to arts, crafts, sports and general knowledge in the field of virtual reality games, virtual reality contents and virtual characters; arranging and organization of seminars; conducting seminars in the field of motion pictures, movies, games, animation, animated films, animated cartoons and entertainment; provision of non-downloadable electronic publications, namely, e-zines, books, magazines, manuals featuring motion pictures, movies, games, animation, animated films, animated cartoons and entertainment; Reference libraries of literature and documentary records; book rental; planning arrangement of showing movies, shows, plays or musical performances; movie theatre presentations or and movie film production and distribution; presentation of live show performances; direction or presentation of plays; presentation of musical performances; production of radio or television programs; production of videotape film in the field of education, culture, entertainment or sports; directing of making of radio and television programs; organization of sporting events, namely, swimming meets, soccer competitions; organization of social entertainment events excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and auto races; providing audio or video studio services; providing exercise facilities; providing amusement facilities; entertainment services, namely, providing virtual environment where users can interact for the purposes of recreation, leisure or entertainment; virtual reality game services provided on-line from a computer network; virtual reality arcade services; providing on-line computer games; providing online computer games through the Internet by means of mobile phones or mobile computer terminals; Entertainment services, namely, providing online, non-downloadable still images, moving images, still images with sounds and moving images with sounds featuring virtual characters through mobile phone communications; Entertainment services, namely, providing online, non-downloadable moving images featuring motion pictures, movies, games, animation, animated films, animated cartoons and virtual characters, music and sounds in the nature of musical sound recordings, ringtones, audio recordings in the field of musical performances; organization of online game competitions; providing video studios; providing virtual video studios; providing information on newspaper articles, namely, providing information, news and commentary in the field of current events via the Internet; provision of online non-downloadable computer game software and computer game programs; providing online, non-downloadable computer game programs and virtual reality game software for mobile telephones and mobile computer terminals; providing information on newspaper articles in the nature of providing information, news and commentary in the field of motion pictures, movies, games, animation, animated films, animated cartoon and entertainment

International Class 42: Computer programming services, namely, content creation for virtual worlds and three dimensional platforms; computer services, namely, creation of online community to enable registered users to participate in discussions, get feedback from peers, create a virtual community and engage in social networking; creating and maintaining web sites for social networking services; rental of web servers; electronic computerized data storage; computer software design, computer programming, and maintenance of computer software; providing search engines for the internet; rental of computers; providing temporary use of non-downloadable computer programs to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters on data networks; computer software design, computer programming, and maintenance of computer software for use in relation to animation; computer programming of computer games; provision of online non-downloadable computer software and application software not downloadable for smartphones to create, edit, store, operate, manipulate, record and publish virtual characters; provision of temporary use of online non-downloadable computer software and application software not downloadable to create, edit, store, record, transmit, publish and stream live video performance and virtual video performance on the world wide web, telecommunication network and computer network; provision of online non-downloadable virtual reality computer software for manipulation and creation of virtual characters; Software as a Service services featuring computer software to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters; Platform as a Service featuring computer software to enable users to transmit, distribute, publish, upload, download, stream, play, reproduce, view and listen to live video performance played and performed by utilizing virtual characters; Providing temporary use of non-downloadable computer software and application software to create, edit, store, operate, manipulate, record and publish virtual characters; Providing temporary use of non-downloadable computer software and application software to create, edit, store, record, transmit, publish and stream live video performance and virtual video performance on the world wide web, telecommunication network and computer network; consulting in the field of telecommunications technology

 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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

 

APPLICATION SUSPENDED UNTIL SUBMISSION OF FOREIGN REGISTRATION OR PROOF THAT FOREIGN REGISTRATION WAS RENEWED 

 

Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed.  TMEP §§716.02(b), 1003.04.  Applicant must also provide an English translation if the foreign registration or renewal document is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 10, 2019 for

U.S. Trademark Application Serial No. 88214461

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

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

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@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).

 

 

 

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.”