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: 3/15/2019

 

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:

• Prior-Filed Applications
• Applicant Must Clarify its Identification of Goods and Services
• Multi-Class Requirement

 

 

PRIOR-FILED APPLICATIONS

The filing dates of pending U.S. Application Serial Nos. 79246759 and 87979005 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

 

APPLICANT MUST CLARIFY ITS IDENTIFICATION OF GOODS AND SERVICES

Certain wording in the identification is indefinite or overly broad and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  Please see the notes and suggested amendments below.

 

Additionally, the identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.  Some of the goods identified in the application do contain these acceptable parentheses, and are noted below. 

 

Applicant must remove the unacceptable parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.

 

Applicant should note that in the suggested amendments below, any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and services.  If there is wording in the applicant’s version of the identification of goods and services which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate:

 

 

International Class 9:  Software for arcade video game machines BEING {applicant must state the function of the software, e.g., game software}; programs for arcade video game machines BEING {applicant must state the function of the software, e.g., video game programs}; telecommunication machines and apparatus, NAMELY, {applicant must specify the machines and apparatus, e.g. cell phones}; cellular phone straps; other parts and fitting for telecommunication machines and apparatus, NAMELY, {applicant must specify the goods to which this wording refers, e.g., head-clip cell phone holders}; computer software BEING {applicant must specify the function of the software, e.g., computer game software}; computer programs IN THE NATURE OF {applicant must state the function of the programs, e.g., video game programs}; electronic circuits AND BLANK {applicant must indicate that the following media are blank, or specify the content which has already been recorded on the media if the media are not blank} magnetic tapes, magnetic discs, optical discs, ROM cartridges and other storage media {applicant must specify the exact storage media this wording refers to} on which computer programs are recorded; other applied electronic machines IN THE NATURE OF {applicant must specify the machines which this refers to, e.g., computers}; instruments and parts and fittings for applied electronic machines, NAMELY, {applicant must specify the nature of these goods, e.g., computer screens}; software for video game consoles BEING {applicant must state the function of the software, e.g., game software}; programs for video game consoles BEING {applicant must state the function of the programs, e.g., video game programs}; electronic circuits AND BLANK {applicant must indicate that the following media are blank, or specify the content which has already been recorded on the media if the media are not blank}  magnetic tapes, magnetic discs, optical discs, ROM cartridges and other storage media on which programs for video game consoles are recorded; software for handheld game units with liquid crystal displays, NAMELY, {applicant must state the function of the software, e.g., game software}; programs for handheld game units with liquid crystal displays, NAMELY, {applicant must state the function of the software, e.g., video game programs}; electronic circuits AND BLANK {applicant must indicate that the following media are blank, or specify the content which has already been recorded on the media if the media are not blank} magnetic tapes, magnetic discs, optical discs, ROM cartridges and other storage media on which programs for handheld game units with liquid crystal displays are recorded; recorded compact discs CONTAINING {applicant must specify the content of the media, e.g., movies, music} and other sound recorded storage media IN THE NATURE OF {applicant must specify the media and the content, e.g., high definition digital discs containing music}; downloadable music FILES including musical ringtones for mobile phones (including musical ringtones for mobile phones); downloadable sound FILES IN THE NATURE OF {applicant must specify the nature of these goods, e.g., music, audio books in the field of [applicant must indicate subject matter]} AND audio ringtones for mobile phones (including audio ringtones for mobile phones). Collections of DOWNLOADABLE photographs; DOWNLOADABLE IMAGES AND PICTURES IN THE FIELD OF {applicant must indicate the content or subject matter}; DOWNLOADABLE MUSICAL SOUND RECORDINGS 

 

International Class 16:  Pastes and adhesives for stationery or household purposes; packaging containers of paper; albums for collecting trading cards; stationery; trading cards OTHER THAN FOR GAMES {trading cards for games are in Class 28}; postcards; music score books; song books; collections of PRINTED {applicant must specify whether the photographs are “printed” in Class 16 or “downloadable” in Class 9} photographs; calendars; posters; catalogues IN THE FIELD OF {applicant must indicate the specific field of use, e.g., videogames}; pamphlets IN THE FIELD OF {applicant must indicate the specific field of use, e.g., videogames}; magazines, manuals and books relating to arcade video games and strategy information on arcade video games; magazines, manuals and books relating to computer games and strategy information on computer games; magazines, manuals and books relating to consumer video games and strategy information on consumer video games; magazines, manuals and books relating to hand held game units with liquid crystal displays and strategy information on games for hand held game units with liquid crystal displays; comic books and novels; magazines featuring cartoons; other printed matter, NAMELY, {applicant must further specify the nature of these goods, e.g., posters, video game instruction manuals}  

 

International Class 28:  Amusement machines and apparatus for use in amusement parks and their parts and fittings, NAMELY, {applicant must further specify the nature of these goods, e.g., amusement apparatus incorporating an external display screen, coin-operated and automatic amusement machines, amusement game machines}; arcade video game machines; arcade game robots; video game consoles; hand·held units with liquid crystal displays for playing ELECTRONIC {applicant must specify that the games are electronic, or it is unclear what type of hand held units this wording refers to} games; cases for hand·held units with liquid crystal displays for playing ELECTRONIC {applicant must specify that the games are electronic, or it is unclear what type of hand held units this wording refers to} games; card game toys; other toys, NAMELY, {applicant must identify the specify toys to which this wording refers, e.g., action figures}; dolls; board games; go games; utagaruta (Japanese style playing cards); shogi games (Japanese style chess); dices; sugoroku (Japanese style dice games); dice cups; diamond games IN THE NATURE OF {applicant must specify the nature of these goods, e.g., manipulative puzzles and games}; chess games; checkers; conjuring apparatus IN THE NATURE OF {applicant must further specify the goods to which this wording refers as the current wording is overbroad, e.g., game playing talking boards}; dominos; playing cards; hanafuda (Japanese style playing cards); game cards; mah·jong; pachinko machines and their parts and fittings; pachinko·based slot machines and their parts and fittings; game machines and apparatus; billiard equipment. Trading cards FOR GAMES

 

International Class 41:  providing images and pictures via telecommunication, NAMELY, {applicant must further clarify the nature of the telecommunication, and state that the images and pictures are non-downloadable since downloadable images and pictures would be Class 9 goods, e.g. providing a website featuring non-downloadable images and pictures}; providing music and voices via telecommunication NAMELY, {applicant must further clarify the nature of the telecommunication, what is meant by the term “voices”, and state that the music is non-downloadable since downloadable music would be Class 9 goods, e.g. providingnon-downloadable playback of music via global communications networks}; planning, arranging and conducting of game, comic, animation and movie events, NAMLEY, {applicant must provide the nature of the events, e.g., conventions, conferences, film festivals}; providing games via telecommunication, IN THE NATURE OF {applicant must further specify the nature of these services, e.g., on-line computer games}; providing amusement facilities; providing information on the provision of games.

 

International Class 42:  Providing meteorological information; computer software design, computer programming, AND or {the word “or” renders this identification indefinite, as it is unclear which of the identified services the applicant is providing} maintenance of computer software; technical advice relating to performance, AND operation, etc. {“etc.” renders this identification indefinite and overbroad, because it indicates that applicant will provide services not listed in the identification.  Applicant must expressly state the services provided} of computers, automobiles AND other machines that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them {This wording is indefinite, as it does not identify any specific machines.  Applicant must identify the specific machines to which this wording refers}, NAMELY, {applicant must specify the Class 42 services, e.g., design advice relating to the performance and operation of automobiles, technical advice relating to computers}; rental of measuring apparatus; rental of computers; providing computer programs, NAMELY, {applicant must further specify the nature of these services, e.g., leasing of computer programs, creating of computer programs}; rental of storage area of computer servers, NAMELY, {applicant must further clarify the nature of these services, e.g., rental of server memory space}; hosting computer sites WEB SITES OF OTHERS {applicant must specify that the services are the hosting of websites for others, as the current wording is unclear whether the applicant is merely hosting its own website, in which case applicant must further specify the nature of that website}.

 

INTERNATIONAL CLASS 37:  TECHNICAL ADVICE RELATING TO THE REPAIR, INSTALLATION, AND MANUFACTURE OF {applicant must indicate the goods being repaired, installed, and manufactured, e.g., automobiles}

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 in or encompassed by those in the original U.S. 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).  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.

 

 

MULTI-CLASS REQUIREMENT

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)       List the goods and/or 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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 5 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 Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

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.

 

 

ASSISTANCE

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.  

 

 

 

/Kyle Ingram/

Kyle Ingram

Attorney Advisor

Law Office 125

(571)272-5276

Kyle.ingram@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 3/15/2019 FOR U.S. APPLICATION SERIAL NO. 88238792

 

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 3/15/2019 (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.