To: | Wormhole Labs, Inc. (trademarks@fishiplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88353873 - THE WORLD IS THE GAME - 102271.34US |
Sent: | 6/5/2019 4:34:51 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88353873
MARK: THE WORLD IS THE GAME
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Wormhole Labs, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On June 5, 2019, the trademark examining attorney and ROBERT D. FISH discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
SIGNATURE NOT ACCEPTABLE – DOCUMENT SIGNING SOFTWARE NOT ALLOWED
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
IDENTIFICATION OF GOODS AND SERVICES
CLASS 9
The applicant must specify whether the “software” is “downloadable” or “recorded”
In addition, the applicant must also specify the use of the gaming software because it is not clear whether the gaming software is for “gambling” or for “recreational game playing
purposes”
CLASS 42
The applicant must amend “portal” to “website” to clarify the nature of the services.
In addition, the applicant must amend “software as a services” to “software as a service”
SUGGESTED IDENTIFICATION OF GOODS
Applicant may substitute the following wording, if accurate:
IC 009: Downloadable software for computers, smart phones, and smart devices, namely, software for the transmission, distribution, recording, reproduction, display, organization, management, manipulation and review of messages, text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, cell phone networks, communication networks and the global information network; computer, smart phone and smart device downloadable software for conducting voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; computer, smart phone, and smart device downloadable software for determining and communicating geographic locations; computer, smart phone, and smart device downloadable software for organizing and calendaring events; computer, smart phone and smart device downloadable gaming software for recreational game playing purposes
IC 042: Providing online, non-downloadable software for virtual reality, mixed reality, and/or augmented reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; providing online, non-downloadable operating system software for computer hardware and computer peripherals; computer services, namely, interactive hosting services which allow users to publish and share content and images online; providing an online website featuring non-downloadable software that gives users the ability to upload, exchange, and share content relating to audio, video, text, binary, still images, graphics, multimedia files and computer games; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities and engage in social networking services; electronic storage of electronic media, namely, images, text and video and audio data; software as a service (SaaS) featuring computer programs for assisting developers in creating program code for use in application programs; software as a service (SaaS) featuring computer programs for running development programs and application programs in a common development environment; software as a service (SaaS) featuring computer programs for use in developing and publishing websites, information, and content; Computer services, namely, hosting online web facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Hosting an online website featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple online websites; Providing an on-line computer database in the field of computer programming featuring searchable indexes of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, regarding virtual reality, mixed reality, and/or augmented reality; Computer services in the nature of providing customized online web pages featuring user-defined or specified information, personal profiles, and virtual reality, mixed reality, and/or augmented reality content and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks; Providing temporary use of non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networks
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.
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 two classes. Applicant submitted fees sufficient for two classes. Therefore, all filing fees have been 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.
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.
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@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.