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: 3/17/2019

 

 

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.

 

Search of Office’s Database of Marks

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

Summary of Issues:

• Advisory: Potential Section 2(d) Refusal – Pending Application
• Classification and Identification of Goods
• Amended Mark Description Required

 

Advisory: Potential Section 2(d) Refusal – Pending Application

 

The filing date of pending U.S. Application Serial No. 88152657 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.

 

Classification and Identification of Goods

 

Particular wording within the identification of goods is indefinite and must be clarified to further specify the nature, type, content or subject matter of certain items, as set out in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For instance, the wording “Games” and “Games relating to fictional characters” in the identification of goods for International Class 28 is indefinite because applicant must specify the type(s) of games.

 

In addition, particular wording in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For instance, applicant must clarify the wording “Freeware” in International Class 9.  Where applicable, the trademark examining attorney has suggested acceptable wording in bold below.

 

Further, some of the identification for software in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See 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).  The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

 

The wording “Printed matter” in the identification of goods in International Class 16 is indefinite and must be clarified to indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).  For example, “magazines in the field of medicine,” “newsletters about television programs,” and “books and pamphlets in the field of financial classification of companies and securities,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

The wording “Holograms” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass hologram apparatus in Class 9, and printed holograms in Class 16.

 

The wording “Trading cards” in the identification of goods for International Class 28 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass trading cards, other than for games in Class 16, and trading cards for games in Class 28.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Applicant may substitute the following wording, if accurate:

 

Class 009:  Hologram apparatus; Optical disc recordings featuring {indicate subject matter, e.g. self-improvement, mathematics instruction}; Computer application software featuring games and gaming; Computer application software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Computer application software for mobile telephones, namely, software for {specify the function of the software, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Computer game software downloadable from a global computer network; Computer game software for use on mobile and cellular phones; Computer programs for video and computer games; Computer programs for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, use as spreadsheet}; Computer programs for accessing, browsing and searching online databases; Computer programs for pre-recorded games; Computer screen saver software, recorded on computer media or downloadable; Computer software applications, downloadable for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Computer software designed to estimate resource requirements; Downloadable screen saver software for computers; Downloadable screen saver software for phones; Downloadable software, namely, software for {specify the function of the software, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Downloadable software applications for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Downloadable application software for smart phones, namely, software for {specify the function of the software, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Downloadable wallpapers for computers and phones, namely, downloadable images in the field of {indicate subject matter or field, e.g., automobiles, cats and dogs}; Freeware, namely, software for {specify the function of the software, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games} made available for use at no cost or for a nominal voluntary fee; Interactive computer game programs; Image recognition software; Interactive multimedia software for playing games; Multimedia software, namely, software for {specify the function of the software, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Mobile software, namely, software for {specify the function of the software, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games} for use on mobile telephones; Mobile apps, namely, downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations and, if software is content- or field-specific, the content or field of use}; Programs for computers, namely, computer programs for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, use as spreadsheet}; Programs for smartphones, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Desktop publishing software; Screen savers, namely, downloadable computer screen saver software; Software downloadable from the internet, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Software and applications for mobile devices, namely, software for {specify the function of the software, e.g., use in database management, use in electronic storage of data, use as spreadsheet, playing video games}; Video disks and video tapes with recorded animated cartoons; Animated cartoons in the form of cinematographic films; Audio books, namely, {specify the type(s) or subject matter of the audio books, e.g. audio books in the nature of {indicate type of books, e.g., novels, short stories, etc., audio books in the field of {indicate subject matter, e.g., sports, art history, etc.}}; Electronic books recorded on {specify type of disc, e.g. optical, compact, video} disc featuring {indicate subject matter, e.g. travel, learning activities for children}; Cinematographic films featuring {indicate subject matter, e.g. animated cartoons, comedy}; Cinematographic film, exposed; Digital books downloadable from the Internet featuring {indicate subject matter, e.g. travel, learning activities for children}; Downloadable comic strips; Downloadable computer graphics; Downloadable digital photos in the field of {indicate subject matter or field, e.g., automobiles, cats and dogs, etc.}; Downloadable electronic books featuring {indicate subject matter, e.g. learning activities for children}; Downloadable movies featuring {indicate subject matter, e.g. animated cartoons, comedy}; Downloadable image files containing {indicate content or subject matter, e.g. artwork, videos and games relating to sporting and cultural activities}; Downloadable graphics for mobile phones; Downloadable electronic brochures featuring {indicate subject matter, e.g. travel, learning activities for children}; Electronic databases in the field of {indicate subject matter or field} recorded on computer media; Downloadable e-books in the field of {indicate subject matter, e.g. travel, learning activities for children}; Downloadable electronic magazines featuring {indicate subject matter, e.g. travel, learning activities for children}; Electronic publications recorded on computer media in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter, e.g. travel, learning activities for children}; Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter, e.g. travel, learning activities for children}; Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of games and gaming; Downloadable holographic images in the field of {indicate subject matter or field, e.g., automobiles, cats and dogs}; Prerecorded interactive DVDs featuring {indicate subject matter, e.g., music, trading cards, games}; Instruction manuals in downloadable electronic format, namely, {specify the nature, type or subject matter of manuals, e.g. computer game instruction manuals}; Prerecorded exercise DVDs; Pre-recorded DVDs featuring {indicate subject matter, e.g., music, trading cards, games}; Pre-recorded DVDs featuring games; Prerecorded motion picture videos featuring {indicate subject matter, e.g. comedy, music}; Video films featuring {indicate subject matter, e.g. comedy, drama}

 

Class 016:  Printed matter, namely, {specify the type of printed matter, e.g., newspapers, magazines, novels, short stories, etc.} featuring {specify subject matter, e.g. travel, learning activities for children}; Books in the field of {indicate subject matter, e.g., science, history}; Art pictures; Art prints; Brochures featuring {indicate subject matter, e.g. travel, learning activities for children}; Booklets relating to games; Comics; Computer game instruction manuals; Comic books; Printed holograms; Trading cards, other than for games

 

Class 028:  Toys, games, playthings and novelties, namely, {specify particular items in Class 28, e.g. board games, card games, toy balloons, toy furniture, toy robots, toy construction sets, infant toys, puppet theatres, action figure toys, model toy vehicles, toy and novelty face masks, whoopee cushions, toy foam fingers and hands}; Computer game apparatus, namely, {specify particular game apparatus in Class 28, e.g. apparatus for electronic games other than those adapted for use with an external display screen or monitor, apparatus for electronic games adapted for use with an external display screen or monitor}; Controllers for game consoles; Controllers for video game machines; Joysticks for video games; Protective cases for video game device remote controls; Video game apparatus, namely, {specify particular game apparatus in Class 28, e.g. apparatus for electronic games other than those adapted for use with an external display screen or monitor, apparatus for electronic games adapted for use with an external display screen or monitor}; Apparatus for games, namely, {specify particular game apparatus in Class 28, e.g. bases, bats, and balls for playing indoor and outdoor games, apparatus for electronic games other than those adapted for use with an external display screen or monitor, apparatus for electronic games adapted for use with an external display screen or monitor}; Board games; Chessboards; Chess pieces; Chess games; Cases for play accessories; Cases for playing cards; Game equipment, namely, chips and dice; Collectable toy figures; Compendiums of board games; Controllers for toys, namely, {specify toys, e.g., cars, planes}; Dice; Electronic board games; Electronic games, namely, {specify the type(s) of electronic games, e.g. electronic dart games, electronic games for the teaching of children, electronic games other than those adapted for use with television receivers only}; Electronic games apparatus, namely, {specify the type(s) of electronic games apparatus, e.g. apparatus for electronic games other than those adapted for use with an external display screen or monitor, apparatus for electronic games adapted for use with an external display screen or monitor}; Games, namely, {specify the type(s) of games in Class 28, e.g. electronic dart games, board games, tabletop games}; Games, namely, {specify the type(s) of games in Class 28, e.g. board games, tabletop games, games adapted for use with television receivers} featuring fictional characters; Game boards for trading card games; Kits for the construction of scale models, namely, scale model kits; Kits of parts for constructing models in the nature of scale model kits; Kits of parts for making toy models in the nature of scale model kits; Modeled plastic toy figurines; Models, namely, {specify the nature or type of models, e.g. toy models, model cars, model helicopters} for use with role playing games; Models, namely, {specify the nature or type of models, e.g. toy models, model cars, model helicopters} for use with war games; Playing pieces in the nature of miniature action figures for use in playing role playing games; Playing pieces in the nature of miniature action figures for use in playing war games; Playing cards; Portable games and toys incorporating telecommunication functions, namely, {clarify the nature or type of goods, e.g. portable games with liquid crystal displays, portable handheld game consoles incorporating telecommunication functions}; Positionable toy figures; Puzzles; Role playing games; Scale model figures; Scale model vehicles; Scale model vegetation; Scale model structures in the nature of {specify type(s) of structures}; Scale model kits; Scale model buildings; Scale model aeroplanes; Tabletop hobby battle games in the nature of war games using toy model soldiers; Video game machine cases; Trading cards for games

 

Applicant’s goods 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.

 

Amended Mark Description Required

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:

 

The mark consists of the stylized word “CONQUEST”, with the letter “C” formed by a miscellaneous design with spikes extending therefrom, and a pair of lines extending horizontally from the letter “C”, one line above the letters “ONQUEST” and the other line below the letters, each line terminating in an angled portion extending away from the letter “T”, and wherein the tail of the "Q" interrupts the lower horizontal line.

 

Response Guidelines

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

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.  

 

 

 

/Leslie Ann Thomas-Riggs/

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

USPTO, Law Office 125

(571) 272-5469

leslie.thomas-riggs@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 3/17/2019 FOR U.S. APPLICATION SERIAL NO. 88231502

 

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 3/17/2019 (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.