Offc Action Outgoing

SHIMAJIRO A WONDERFUL ADVENTURE

Benesse Corporation

U.S. TRADEMARK APPLICATION NO. 88352471 - SHIMAJIRO A WONDERFUL ADVENTURE - 742351

To:	Benesse Corporation (trademark@leydig.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 88352471 - SHIMAJIRO A WONDERFUL ADVENTURE - 742351
Sent:	6/5/2019 10:06:16 AM
Sent As:	ECOM121@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 88352471

MARK: SHIMAJIRO A WONDERFUL ADVENTURE

*88352471*

CORRESPONDENT ADDRESS:

CLAUDIA W. STANGLE

LEYDIG, VOIT & MAYER, LTD.

TWO PRUDENTIAL PLAZA, 180 N. STETSON AVE

SUITE 4900

CHICAGO, IL 60601

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

VIEW YOUR APPLICATION FILE

APPLICANT: Benesse Corporation

CORRESPONDENT’S REFERENCE/DOCKET NO:

742351

CORRESPONDENT E-MAIL ADDRESS:

trademark@leydig.com

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: 6/5/2019

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Summary of Issues:

Identification of Goods and Services Requirement
Multiple-Class Application Requirements
Mark Description Requirement
Significance of Wording Requirement
Response Guidelines

Search of Office’s Database of Marks

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).

Identification of Goods and Services Requirement

Select entries from applicant’s identification of goods and/or services are indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Furthermore, select entries from the applicant’s identification of goods and/or services need clarification because it is not clear what the goods and/or services are and the wording could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, the identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).

The chart below identifies applicant’s indefinite and broad identification entries, the rationale explaining why the entries are indefinite or broad, and suggested definite and clear wording which applicant may adopt if accurate. Suggested changes are displayed as underlined wording and punctuation. Curly-brackets indicate an area applicant must fill-in information following the provided requirements.

Class	Identification	Issue	Suggested Identification
9	Application software, namely, children's educational application software	Indefinite and overly broad. Applicant must specify the nature of the software and programs and also what the function is of the software and programs.	Downloadable application software for mobile phones, namely, children's educational application software
9	computer software, namely, children's educational software	Indefinite and overly broad. Applicant must specify the nature of the software and programs and also what the function is of the software and programs.	downloadable computer software, namely, children's educational software
9	computer software	Indefinite and overly broad. Applicant must specify the nature of the software and programs and also what the function is of the software and programs.	downloadable computer software for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc., and indicate the content or field of use, if the goods are content- or field-specific}
9	application software	Indefinite and overly broad. Applicant must specify the nature of the software and programs and also what the function is of the software and programs.	downloadable application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}
9	audiovisual teaching apparatus	Indefinite. Applicant must specify the apparatus provided.	audiovisual teaching apparatus, namely, slide projectors
9	audiovisual teaching apparatus, namely, tablet computers	Okay	audiovisual teaching apparatus, namely, tablet computers
9	computers	Okay	computers
9	prerecorded magnetic data carriers	Indefinite. Applicant must specify the subject matter of the goods.	prerecorded magnetic data carriers featuring {indicate subject matter}
9	telecommunication machines and apparatus	Indefinite. Applicant must specify the apparatus provided.	telecommunication machines and apparatus, namely, multiplexors, switches, transmitters
9	smartwatches	Okay	smartwatches
9	smartphones	Okay	smartphones
9	game programs for home video game machines	Indefinite. Applicant must specify the nature of the software and programs provided.	recorded video game programs for home video game machines
9	electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays	Okay	electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays
9	protective helmets for sports	Okay	protective helmets for sports
9	sports whistles	Okay	sports whistles
9	weight belts for scuba diving	Okay	weight belts for scuba diving
9	air tanks for scuba diving	Okay	air tanks for scuba diving
9	snorkels	Okay	snorkels
9	regulators for scuba diving	Okay	regulators for scuba diving
9	metronomes	Okay	metronomes
9	electronic circuits and prerecorded CD-ROMs featuring automatic performance programs for electronic musical instruments	Okay	electronic circuits and prerecorded CD-ROMs featuring automatic performance programs for electronic musical instruments
9	effecters for electric or electronic musical instruments	Indefinite. Applicant must specify the nature of the goods provided.	electric and electronic effects units for electric or electronic musical instruments
9	phonograph records	Indefinite. Applicant must specify the subject matter of the goods.	phonograph records featuring {indicate subject matter}
9	downloadable music files	Okay	downloadable music files
9	downloadable image files	Indefinite. Applicant must specify the subject matter of the goods.	downloadable image files containing {indicate content or subject matter}
9	downloadable films and movies	Indefinite. Applicant must specify the nature and subject matter of the goods.	downloadable films and movies featuring {indicate subject matter} provided via a video-on-demand service
9	animated cartoons	Indefinite. Applicant must specify the nature of the goods provided.	Video disks and video tapes with recorded animated cartoons
9	downloadable films and movies containing animated films, children's film, children's lessons and educations, and children's educational programs	Indefinite. Applicant must specify the nature of the goods provided.	downloadable films and movies containing animated films, children's film, children's lessons and educations, and children's educational programs, provided via a video-on-demand service
9	downloadable image files containing animated films, children's film, comedy films, children's lessons and educations, and children's educational programs	Okay	downloadable image files containing animated films, children's film, comedy films, children's lessons and educations, and children's educational programs
9	prerecorded video discs and video tapes	Indefinite. Applicant must specify the subject matter of the goods.	prerecorded video discs and video tapes featuring {indicate subject matter}
9	recorded video discs, video tapes, CD-ROMs, DVDs and other recorded media featuring animated films, children's films, comedy films, children's lessons and educations, and children's educational programs	Indefinite. Applicant must specify the nature of the goods provided.	recorded video discs, video tapes, CD-ROMs, DVDs and digital media devices featuring animated films, children's films, comedy films, children's lessons and educations, and children's educational programs
9	prerecorded compact discs featuring music	Okay	prerecorded compact discs featuring music
9	video disks and video tapes with recorded animated cartoons	Okay	video disks and video tapes with recorded animated cartoons
9	electronic publications	Indefinite and overly broad. Applicant must specify the nature of the publications and the subject matter of the publications provided.	downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}
9	downloadable electronic publications, namely, magazines, periodicals, newsletters, journals, books, comic books, catalogues and pamphlets in the field of education, learning and study	Okay	downloadable electronic publications, namely, magazines, periodicals, newsletters, journals, books, comic books, catalogues and pamphlets in the field of education, learning and study
9	electronic publications, namely, magazines, periodicals, newsletters, journals, books, comic books, catalogues and pamphlets in the field of education, learning and study recorded on computer media	Okay	electronic publications, namely, magazines, periodicals, newsletters, journals, books, comic books, catalogues and pamphlets in the field of education, learning and study recorded on computer media
9	electronic publications in the nature of picture books recorded on computer media	Okay	electronic publications in the nature of picture books recorded on computer media
9	downloadable electronic publications in the nature of picture books	Okay	downloadable electronic publications in the nature of picture books
9	electronic publications in the nature of magazines, books and journals in the field of comics, cartoons, play, games, trips, cooking, hobbies, pets, cleaning, storage, nursing care, music, images, fashions, beauty treatment, health, pregnancy, childbirth, parenting, child-raising, interior design, interior accessories, interior decoration, interior goods, foods and beverages, home electrical appliances, sports, toys and vehicles recorded on computer media	Okay	electronic publications in the nature of magazines, books and journals in the field of comics, cartoons, play, games, trips, cooking, hobbies, pets, cleaning, storage, nursing care, music, images, fashions, beauty treatment, health, pregnancy, childbirth, parenting, child-raising, interior design, interior accessories, interior decoration, interior goods, foods and beverages, home electrical appliances, sports, toys and vehicles recorded on computer media
9	downloadable electronic publications in the nature of magazines, books and journals in the field of comics, cartoons, play, games, trips, cooking, hobbies, pets, cleaning, storage, nursing care, music, images, fashions, beauty treatment, health, pregnancy, childbirth, parenting, child-raising, interior design, interior accessories, interior decoration, interior goods, foods and beverages, home electrical appliances, sports, toys and vehicles	Okay	downloadable electronic publications in the nature of magazines, books and journals in the field of comics, cartoons, play, games, trips, cooking, hobbies, pets, cleaning, storage, nursing care, music, images, fashions, beauty treatment, health, pregnancy, childbirth, parenting, child-raising, interior design, interior accessories, interior decoration, interior goods, foods and beverages, home electrical appliances, sports, toys and vehicles
9	downloadable educational course materials	Indefinite. Applicant must specify the subject matter of the goods.	downloadable educational course materials in the field of {indicate subject matter or field of study}
9	exposed cinematographic films	Okay	exposed cinematographic films
9	exposed slide films	Okay	exposed slide films
9	slide film mounts	Okay	slide film mounts
9	game programs for arcade video game machines	Indefinite. Applicant must specify the nature of the goods.	recorded video game programs for arcade video game machines
9	eyewear, namely, sunglasses, eyeglasses	Okay	eyewear, namely, sunglasses, eyeglasses
9	cases for spectacles and sunglasses	Okay	cases for spectacles and sunglasses
9	photographic machines and apparatus	Indefinite. Applicant must specify the apparatus provided.	photographic machines and apparatus, namely, cameras
9	cinematographic machines and apparatus	Okay	cinematographic machines and apparatus
9	optical machines and apparatus	Indefinite. Applicant must specify the apparatus provided.	optical machines and apparatus, namely, scanners
9	divers' apparatus, not for sports	Indefinite. Applicant must specify the apparatus provided.	divers' apparatus, not for sports, namely, masks
9	power distribution or control machines and apparatus	Indefinite. Applicant must specify the apparatus provided.	power distribution or control machines and apparatus, namely, power distributing boxes
9	rotary converters	Okay	rotary converters
9	phase modifiers	Indefinite. Applicant must specify the nature of the goods.	phase modifiers, namely, optical phase shifters
9	solar batteries	Okay	solar batteries
9	batteries and cells	Indefinite. Applicant must specify the nature of the goods.	batteries and dry cells
9	laboratory apparatus and instruments	Indefinite. Applicant must specify the apparatus provided.	laboratory apparatus and instruments, namely, homogenizers
9	measuring or testing machines and instruments	Indefinite. Applicant must specify the machines and instruments provided.	measuring and testing machines and instruments for measuring and testing the temperature, pressure, quantity and concentration of gas and liquids
9	fireproof garments	Okay	fireproof garments
9	disaster prevention hoods	Indefinite. Applicant must specify the nature of the goods.	disaster prevention hoods in the nature of protective helmets
9	teaching robots	Okay	teaching robots
9	cameras	Okay	cameras
9	cinematographic projectors	Okay	cinematographic projectors
9	mobile phones	Okay	mobile phones
9	television receivers	Okay	television receivers
9	telephones	Okay	telephones
9	downloadable computer game programs	Okay	downloadable computer game programs
9	computer game programs	Indefinite. Applicant must specify the nature of the goods.	downloadable computer game programs
9	downloadable game programs for cellular phones and smart phones	Indefinite. Applicant must specify the nature of the goods.	downloadable electronic game programs for cellular phones and smart phones
9	video game cartridges	Okay	video game cartridges
9	electronic circuits and CD-ROMs recorded with computer game programs for hand-held games with liquid crystal displays	Okay	electronic circuits and CD-ROMs recorded with computer game programs for hand-held games with liquid crystal displays
9	electronic machines, apparatus and their parts	Indefinite and overly broad. Applicant must specify the nature of the goods and the function of the goods provided.	electronic machines, apparatus and their parts for {specify function or use, e.g., reading credit cards and recording financial operations}
9	decorative magnets	Okay	decorative magnets
9	pre-recorded DVDs	Indefinite. Applicant must specify the subject matter of the goods.	pre-recorded DVDs featuring {indicate subject matter or field}
9	compact discs	Indefinite. Applicant must specify the subject matter of the goods.	compact discs featuring {indicate subject matter or field}
9	interfaces for computers	Okay	interfaces for computers
9	security alarms	Okay	security alarms
9	fire alarms	Okay	fire alarms
9	gas alarms	Okay	gas alarms
9	anti-theft warning apparatus	Indefinite. Applicant must specify the nature of the goods.	anti-theft warning apparatus, namely, burglar alarms
9	protective helmets	Okay	protective helmets
9	light reflector for the prevention of traffic accidents	Indefinite. Applicant must specify the nature of the goods.	light reflector, namely, reflective mirrors for the prevention of traffic accidents
9	semi-conductor elements	Indefinite. Applicant must specify the nature of the goods.	semi-conductor memory units
9	downloadable music files	Duplicate entries. Applicant must clarify or delete one of these entries.
9	downloadable image files	Duplicate entries. Applicant must clarify or delete one of these entries.
9	slide-rules	Okay	slide-rules
9	counterfeit (false) coin detectors	Okay	counterfeit (false) coin detectors
9	hemline marker	Indefinite. Applicant must specify the nature of the goods.	hemline marker, namely, seam gauges
9	plotters	Okay	plotters
9	electronic tags for goods	Okay	electronic tags for goods
9	dictating machines	Okay	dictating machines
9	voting machines	Okay	voting machines
9	facsimile machines	Okay	facsimile machines
9	scales	Okay	scales
9	rulers (measuring instruments)	Indefinite. Applicant must specify the nature of the goods. Applicant must clarify or remove the parentheses.	measuring rulers
9	electronic notice board	Okay	electronic notice board
9	cinematographic cameras	Okay	cinematographic cameras
9	exposed cinematographic films	Duplicate entries. Applicant must clarify or delete one of these entries.	exposed cinematographic films
9	exposed slide films	Duplicate entries. Applicant must clarify or delete one of these entries.	exposed slide films
9	altimeters	Okay	altimeters
9	taximeters	Okay	taximeters
9	ergometers	Indefinite and overly broad. Applicant must specify the nature of the goods.	ergometers not for medical purposes
9	counters	Indefinite. Applicant must specify the nature of the goods.	Geiger counters
9	cosmographic instruments	Indefinite. Applicant must specify the nature of the goods.	cosmographic instruments, namely, telescopes
9	optical lenses	Okay	optical lenses
9	electric wires	Okay	electric wires
9	wafers (silicon slices)	Indefinite. Applicant must specify the nature of the goods. Applicant must clarify or remove the parentheses.	silicon wafers
9	integrated circuits	Okay	integrated circuits
9	electricity transformers	Okay	electricity transformers
9	fluorescent screens	Okay	fluorescent screens
9	remote control apparatus	Indefinite. Applicant must specify the nature of the goods.	remote controls for televisions
9	light conducting filaments(optical fibers)	Indefinite. Applicant must specify the nature of the goods. Applicant must clarify or remove the parentheses.	optical fibers
9	heat regulating apparatus	Indefinite and overly broad. Applicant must specify the nature of the goods.	heat regulating apparatus, namely, thermostats
9	lighting arresters	Okay	lighting arresters
9	electrolysers	Okay	electrolysers
9	extinguishers	Indefinite and overly broad. Applicant must specify the nature of the goods.	fire extinguishers
9	radiological apparatus for industrial purposes	Indefinite and overly broad. Applicant must specify the nature of the goods.	radiological apparatus, namely, X-ray security scanners for industrial purposes
9	hourglasses	Okay	hourglasses
9	global positioning systems apparatus	Okay	global positioning systems apparatus
9	portable media players	Okay	portable media players
9	cell phone straps	Okay	cell phone straps
9	light-emitting diodes	Okay	light-emitting diodes
9	meters	Indefinite and overly broad. Applicant must specify the nature of the goods.	electric meters
9	electric measuring apparatus	Indefinite and overly broad. Applicant must specify the nature of the goods.	electric measuring apparatus, namely, clamp meters
9	apparatus for recording, transmission or reproduction of sound and images	Okay	apparatus for recording, transmission or reproduction of sound and images
9	magnetic, optical data carriers and computer programs and software recorded on them	Indefinite. Applicant must specify the nature of the goods.	magnetic and optical data carriers featuring children’s educational computer programs and software recorded on them
9	readers	Indefinite and overly broad. Applicant must specify the nature of the goods.	electronic book readers
9	antennas	Okay	antennas
9	satellite dishes	Okay	satellite dishes
9	amplifiers	Okay	amplifiers
9	ticket automats	Indefinite and overly broad. Applicant must specify the nature of the goods.	ticket automats, namely, electronic automatic ticket examination machines
9	cash dispensers	Okay
9	gauges and time regulators measuring consumption quantity per unit	Indefinite. Applicant must specify the nature of the goods.	gauges and time regulators measuring consumption quantity per unit, namely, air/fuel ratio gauges
9	protective clothes	Indefinite. Applicant must specify the nature of the goods.	clothing for protection against fire
9	protective and life saving equipment	Indefinite. Applicant must specify the nature of the goods.	protective and life saving equipment, namely, life saving rafts
9	spectacle lenses	Okay
9	electric conductors	Okay
9	electric energy transformers	Okay
9	electric accumulators	Okay
9	electric power controllers	Okay
9	electric power supplies	Okay
9	electric materials for electricity mains	Indefinite. Applicant must specify the nature of the goods.	electric materials for electricity mains, namely, electric wires, connectors, circuit breakers
9	batteries (accumulators)	Indefinite. Applicant must specify the nature of the goods. Applicant must clarify or remove the parentheses.	batteries and accumulators
9	signaling, signaling tools and apparatus for use in traffic	Indefinite. Applicant must specify the nature of the goods.	signaling, signaling tools and apparatus for use in traffic, namely, traffic lights
9	fire extinguishing apparatus and tools including vehicles for fire extinguishing (including fire extinguishing hoses and fire extinguishing valves)	Indefinite and overly broad. Applicant must specify the nature of the goods.	fire extinguishing apparatus for vehicles, fire-extinguishing systems, fire hoses, fire hose nozzles
9	radar apparatus	Okay
9	fingerprint scanners	Okay
9	ammeters	Okay

41	Nursery schools	Okay
41	educational services	Indefinite. Applicant must specify the nature of the educational services.	educational services, namely, conducting {indicate modes of instruction, e.g., classes, seminars, conferences, workshops} in the fields of {indicate specific fields, e.g. pet care, math, tax preparation}
41	correspondence school services	Okay
41	conducting of correspondence courses	Indefinite. Applicant must specify the nature of the educational services.	conducting of correspondence courses in the fields of {indicate specific fields, e.g., computers, music}
41	language instruction	Okay
41	educational examination	Okay
41	providing information about education	Okay
41	educational and instruction services relating to arts, crafts, sports or general knowledge	Indefinite. Applicant must specify the nature of the educational services.	educational and instruction services, namely, conducting {indicates modes of instruction, e.g., classes, seminars, conferences, workshops} in the fields of arts, crafts, sports and general knowledge
41	educational services and instruction services, namely, classes in the field of arts, crafts, sports, music, health, gymnastics, exercise, morality, ethics, literature, science, physics, languages, math, arithmetic, social studies, geography, history and politics at the primary and secondary levels	Okay
41	arranging and conducting of in-person educational forums	Indefinite. Applicant must specify the subject matter of the educational services.	arranging and conducting of in-person educational forums in the field of {indicate subject matter}
41	arranging, conducting and organization of seminars	Indefinite. Applicant must specify the subject matter of the educational services.	arranging, conducting and organization of seminars in the field of {indicate subject matter}
41	arranging, conducting and organization of seminars in the field of preschool children education and training	Okay
41	organization of exhibitions for cultural or educational purposes	Okay
41	providing electronic publications	Indefinite. Applicant must specify the nature and subject matter of the publications.	Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}
41	providing non-downloadable electronic publications in the nature of magazines, books and journals in the field of education, learning and study	Indefinite. Applicant must specify the nature of the publications.	non-downloadable electronic publications in the nature of magazines, books and journals in the field of education, learning and study
41	providing non-downloadable electronic publications in the nature of magazines, books and journals in the field of comics, cartoons, play, games, trips, cooking, hobbies, pets, cleaning, storage, nursing care, music, images, fashions, beauty treatment, health, pregnancy, childbirth, parenting, child-raising, interior design, interior accessories, interior decoration, interior goods, foods and beverages, home electrical appliances, sports, toys and vehicles	Indefinite. Applicant must specify the nature of the publications.	non-downloadable electronic publications in the nature of magazines, books and journals in the field of comics, cartoons, play, games, trips, cooking, hobbies, pets, cleaning, storage, nursing care, music, images, fashions, beauty treatment, health, pregnancy, childbirth, parenting, child-raising, interior design, interior accessories, interior decoration, interior goods, foods and beverages, home electrical appliances, sports, toys and vehicles
41	providing non-downloadable electronic publications in the nature of picture books	Indefinite. Applicant must specify the nature of the publications.	non-downloadable electronic publications in the nature of picture books
41	services of reference libraries for literature and documentary records	Okay
41	book rental	Okay
41	publication of books	Okay
41	arranging and planning of movies, shows, plays or musical performances	Indefinite. Applicant must specify the nature of the entertainment services.	Planning arrangement of showing movies, shows, plays or musical performances
41	providing on-line videos, not downloadable	Okay
41	movie theatre presentations or movie film production and distribution	Okay
41	providing on-line music, not downloadable	Okay
41	presentation of live show performances	Okay
41	direction or presentation of plays	Okay
41	presentation of musical performances	Okay
41	arranging, conducting and organization of concerts	Okay
41	production of radio or television programs	Okay
41	production of videotape film in the field of education, culture, entertainment or sports	Okay
41	entertainment in the nature of ongoing television programs in the field of children's entertainment	Okay
41	entertainment in the nature of animated and live action television series	Okay
41	directing of radio and television programs	Okay
41	organization, arranging and conducting of sports competitions	Okay
41	organization of entertainment events excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and auto races	Indefinite. Applicant must specify the nature of the entertainment services.	organization of social entertainment events excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and auto races
41	providing audio or video studio services	Okay
41	providing sports facilities	Okay
41	providing amusement facilities	Okay
41	game services provided on-line from a computer network or mobile phone network	Indefinite. Applicant must specify the nature of the game services.	electronic game services provided on-line from a computer network or mobile phone network
41	on-line game services	Indefinite. Applicant must specify the nature of the game services.	providing on-line computer game services
41	providing facilities for movies, shows, plays, music or educational training	Okay
41	providing recreational areas in the nature of play areas for children	Okay
41	booking of seats for shows	Okay
41	rental of sports equipment	Indefinite and overly broad. Applicant must specify the nature of the rental services.	rental of sports equipment, except vehicles
41	rental of records or sound-recorded magnetic tapes	Okay
41	rental of image-recorded magnetic tapes	Okay
41	photography	Okay
41	rental of toys	Okay
41	rental of amusement machines and apparatus	Okay
41	rental of game machines and apparatus	Okay
41	games equipment rental	Okay
41	publication of magazines	Okay
41	art exhibitions	Okay
41	gardens for public admission	Okay
41	organization, management or arrangement of sports competitions	Indefinite and overly broad. Applicant must specify the nature of the services.	organization and arrangement of sports competitions
41	language interpretation	Okay
41	training and educational services	Indefinite. Applicant must specify the nature of the educational services.	training and educational services, namely, conducting {indicate modes of instruction, e.g., classes, seminars, conferences, workshops} in the fields of {indicate specific fields, e.g. pet care, math, tax preparation}
41	symposium and congresses arranging and conducting service	Indefinite. Applicant must specify the nature of the educational services.	arranging and conducting educational congresses and symposia
41	organization of entertainment and cultural activities	Indefinite. Applicant must specify the nature of the entertainment services.	organization of entertainment and cultural conventions and exhibitions
41	editing, publication and circulation of book, periodical, magazine and literature	Okay
41	news reporters services	Okay
41	photo reporters services	Indefinite. Applicant must specify the nature of the entertainment services.	photographic reporters services
41	translation services	Okay
41	conducting guided tours	Indefinite. Applicant must specify the nature of the entertainment services.	conducting guided tours of {indicate facility, e.g., a museum, an historical site, a winery, etc.}
41	rental of indoor aquaria	Okay

42	Providing temporary use of non-downloadable educational software for children	Okay
42	providing temporary use of non-downloadable software applications accessible via a web site	Indefinite. Applicant must specify the nature of the technology services and what the function of the software is.	providing temporary use of non-downloadable software applications accessible via a web site for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}
42	software as a service	Indefinite. Applicant must specify the nature of the technology services and what the function of the software is.	Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}
42	providing computer programs on data networks	Indefinite. Applicant must specify the nature of the technology services and what the function of the software is.	Providing on-line non-downloadable computer software programs for {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use} via global computer networks
42	hosting of web sites	Okay
42	cloud computing	Indefinite. Applicant must specify the nature of the technology services and what the function of the software is.	Cloud computing featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}
42	rental of computers	Okay
42	computer technology consultancy	Okay
42	providing search engines for the internet	Okay
42	computer network configuration services	Okay
42	data encryption services	Okay
42	off-site data backup	Okay
42	computer software design, computer programming, or maintenance of computer software	Indefinite. Applicant must specify the nature of the technology services.	computer software design, computer programming, and maintenance of computer software
42	designing of machines, apparatus, instruments or systems composed of such machines, apparatus and instruments	Okay
42	designing, other than for advertising purposes	Indefinite. Applicant must specify the nature of the design services.	designing for others, other than for advertising purposes, in the field of {specify tangible item(s) or visual display(s), e.g., machinery, computer software, graphic arts, etc.}
42	testing, inspection or research of pharmaceuticals, cosmetics or foodstuffs	Okay
42	research on building construction or city planning	Okay
42	testing or research on prevention of pollution	Okay
42	testing or research on electricity	Okay
42	testing or research on civil engineering	Okay
42	testing, inspection or research on agriculture, livestock breeding or fisheries	Okay
42	testing or research on machines, apparatus and instruments	Indefinite. Applicant must specify the nature of the services.	testing and research on machines, apparatus and instruments
42	providing meteorological information	Okay
42	architectural design	Okay
42	surveying	Okay
42	geological surveys or research	Indefinite. Applicant must specify the nature of the services.	geological surveys and research
42	technological advice relating to computers, automobiles and industrial machines	Okay
42	rental of measuring apparatus	Okay
42	rental of laboratory apparatus and instruments	Okay
42	rental of technical drawing instruments	Okay
42	computer software design, maintenance of computer software	Okay
42	technical research	Indefinite. Applicant must specify the nature of the research services.	technical research in the field of {indicate field or subject matter, e.g., computer hardware systems, renewable energy resources, etc.}
42	chemical research	Okay
42	biology research	Okay
42	physics research	Okay
42	architectural consultation	Okay
42	authenticating works of arts	Okay
42	cloud seeding	Okay
42	weighing goods for others	Indefinite. Applicant must specify the nature of the weighing services.	weighing goods for others, namely, {indicate goods being weighed, e.g., cargo containers, aircraft, etc.}
42	handwriting analysis	Okay
42	mapping services	Okay
42	business card design	Okay
42	graphic design of promotional materials	Okay

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.

Multiple-Class Application Requirements

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 1(b):

(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 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). 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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

Mark Description Requirement

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 the words SHIMAJIRO A WONDERFUL ADVENTURE in white in a cloud shaped green oval with various kinds of trees and plants on top of the cloud shaped oval.”

Significance of Wording Requirement

To permit proper examination of the application, applicant must provide the following information:

(1) Explain whether the wording in the mark “SHIMAJIRO” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.

(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language.

(3) Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in Latin characters) of all non-Latin characters in a mark. If the wording does not have meaning in a foreign language, applicant should so specify.

The format for an English translation and transliteration: “The English translation of “SHIMAJIRO” is “_____”.

The format for when there is no English translation or meaning of the transliteration: “The wording “SHIMAJIRO” has no meaning in a foreign language.”

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.

Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

Response Guidelines

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.

/Elizabeth Shen/

Trademark Examining Attorney

Pronouns: she, her, hers

Law Office 121

571-270-7111

elizabeth.shen@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.

U.S. TRADEMARK APPLICATION NO. 88352471 - SHIMAJIRO A WONDERFUL ADVENTURE - 742351

To:	Benesse Corporation (trademark@leydig.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 88352471 - SHIMAJIRO A WONDERFUL ADVENTURE - 742351
Sent:	6/5/2019 10:06:17 AM
Sent As:	ECOM121@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/5/2019 FOR U.S. APPLICATION SERIAL NO. 88352471

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 6/5/2019 (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.