To: | GOOGLE LLC (tmdocketing@google.com) |
Subject: | U.S. Trademark Application Serial No. 88361840 - S - N/A |
Sent: | December 16, 2019 10:25:10 PM |
Sent As: | ecom113@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88361840
Mark: S
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Correspondence Address: |
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Applicant: GOOGLE LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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PRIORITY ACTION
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 16, 2019
STATUS OF APPLICATION
Pursuant to TMEP §807.03 applicant is advised of the following status of the application. Applicant’s Office action response, dated 11/22/2019, address all procedural issues. Specifically, the Identification Requirement is satisfied. There is one remaining issue with the application, however, which are not raised in the initial Office action, and raises a new issue discussed below.
Applicant must address issues shown below. On 12/16/2019, the examining attorney and Giselle Huron 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 §708.05.
SUMMARY OF ISSUES:
IDENTIFICATION OF GOODS MISCLASSIFIED IN CLASS 9 ONLY- AMENDMENT REQUIRED
Applicant has classified “video game controllers” in International Class 9 for electronic goods, including computer peripherals; however, the proper classification is International Class 28 because video game controllers are considered a game apparatus rather than a computer peripheral. Therefore, applicant may respond by (1) adding International Class 28 to the application and reclassifying these goods in the proper international class, (2) deleting “video game controllers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following identification of goods in Classes 9 and 28, if accurate:
Class 9 –
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“Downloadable mobile game software; Downloadable game software; Downloadable computer software development tools; Downloadable mobile application development tools; Downloadable software development tools; Downloadable software, namely, game engine software; Downloadable software for streaming audio and video content on mobile phones, tablets, personal computers, and televisions; Downloadable software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Downloadable application program interface (API) that enables developers to integrate video content and functionality into websites, software applications, and devices; Downloadable computer applications featuring video and computer games; Computer hardware and computer peripherals all for accessing and transmitting data and content among consumer electronics devices and displays; Computer peripherals, including but not limited to clips, wings, stands; Downloadable computer software for virtualization and machine learning for use in gaming; Downloadable computer software that allows users to capture, create, store, manage, view, upload, download, transmit, post, tag, and link to content in the form of photos, images, virtual reality images, graphics, videos, and other audiovisual and video content.”
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Class 28 – (Added) |
“Video game controllers.” |
Additions to the Identification Not Permitted
Section 1(b) application limitations
Section 44 application limitations
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.
Applicant must also respond to the following requirement.
REQUIREMENT TO CLARIFY THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods and services that may be classified in at least 7 classes; however, applicant submitted a fee sufficient for only 6 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY: Multiple-Class Application Requirements for a Section 1(b) and 44 Filing Basis
The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:
(1) List the goods and 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 already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 7 classes; however, applicant submitted a fee sufficient for only 6 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
FILING FEES FOR ADDED CLASSES
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE GUIDANCE
How to respond. Click to file a response to this nonfinal Office action.
Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.
Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.
If needed, find contact information for the supervisor of the office or unit listed in the signature block.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action. If applicant requires technical assistance in using the online response form, applicant may email TEAS@uspto.gov or call the Trademark Assistance Center at 1-800-786-9199.
/Tiffany Y. Chiang/
Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@uspto.gov