To: | Becker Games LLC (michaelbecker@beckergames.com) |
Subject: | U.S. Trademark Application Serial No. 88376124 - HERAKLES - N/A |
Sent: | May 13, 2020 03:29:59 PM |
Sent As: | ecom119@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88376124
Mark: HERAKLES
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Correspondence Address:
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Applicant: Becker Games LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: May 13, 2020
This Office action responds to applicant’s communication filed on May 10, 2020.
The statements of use 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. Applicant was previously refused registration and required to submit a verified substitute specimen in International Class 9 to show use of the applied-for mark in commerce because the specimen did not show use of the mark with any goods specified in the application. In response to each refused international class, applicant provided a substitute specimen that raises a new issue. Accordingly this is a non-final office action. The substitute specimen does not obviate the initial refusals and thus the prior refusals are continued and maintained.
FAILURE TO FUNCTION AS A TRADEMARK
The name of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to identifying the character. In re Caserta, 46 USPQ2d at 1090; see TMEP §1202.10. In this case, the specimen shows the applied-for mark used only as the name of a character and not as a trademark for applicant’s goods because it appears to identify the name of a character played in the video game and not the game itself.
Response option. Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows proper trademark use for the goods in the statement of use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
MARK ON THE DRAWING AND SPECIMEN DIFFER
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 9, which is required in the statement of use . Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i) . The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as HERAKLES AND THE PRINCESS OF TROY. However, the drawing displays the mark as HERAKLES. The mark on the specimen does not match the mark in the drawing because it includes additional wording. A pplicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen ) that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, adding the wording to the applied-for mark would be a material alteration because it would change the commercial impression of the applied-for mark. The commercial impression changes because the additional wording “AND THE PRINCESS OF TROY” changes the mark into a phrase. Additionally, the mark in the specimen includes additional searchable elements. Specifically, the addition of the wording would require a further search of these term in relation to the other wording in the applied-for mark. See TMEP §807.14, In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986). The additional wording changes the commercial impression because the mark in the specimen includes additional wording that is sufficiently different from the applied-for mark.
In addition, applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy this response option online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
SUBSTITUTE SPECIMEN REQUIRED
Registration is refused because the specimen submitted on December 10, 2019 in International Class 9 is not acceptable as a display associated with downloadable software and appears to be mere advertising material; thus, the specimen fails to show the applied-for mark in use in commerce for that international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimen fails to provide the means to enable the user to download or purchas e the software from the website . See In re Sones , 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc. , 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(e), (i) et seq. Without this feature, the specimen is mere advertising material, which is not acceptable as a specimen to show use in commerce for goods. See In re Kohr Bros. , 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); In re Genitope Corp. , 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.04(b), (c). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the statement of use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Additionally, the substitute specimen submitted on applicant May 10, 2020 failed to provide in response to the refusal a properly verified specimen showing the mark as actually used in commerce for applicant’s goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.63(b); TMEP §§904, 904.07(a), 1301.04(g)(i). A statement of use must include a specimen, properly verified, showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.56(a); TMEP §§904, 1109.09(b).
Examples of specimens for downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. See In re Sones , 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc. , 102 USPQ2d at 1957; TMEP §§904.03(i) et seq .
Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen ) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the software identified in the statement of use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for a statement of use.” The substitute specimen cannot be accepted without this statement. Applicant, however, may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action.
/Kamal Bal/
Kamal S. Bal
Examining Attorney
Law Office 119
571-272-5645
kamal.bal@uspto.gov
RESPONSE GUIDANCE