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: 6/24/2019
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.
Summary of Issues
1. Identification of
Goods for Class 9
2. Identification of
Goods for Class 16
3. Identification of
Goods for Class 28
4. Identification of
Services for Class 41
5. Copy of Foreign
Certificate of Registration
Search Results – No Conflicting Marks Found
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 for Class 9
The identification of goods for Class 9 must be clarified because it is indefinite for
purposes of registration. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format to amend the
identification, if accurate:
- “Software for computers, being both stored and downloadable, in particular games software,” should be amended to “Recorded and
downloadable software, namely, downloadable and recorded computer game software;” in Class 9
- “Downloadable and stored games software for computers,” should be amended to “downloadable and
recorded computer game software;” in Class 9
- “Mobile telephones, smartphones, MP3 players and games consoles;” should be amended to “Mobile telephones, smartphones and MP3
players;” in Class 9 and “video game consoles and handheld game consoles;” in Class 28
- “Downloadable image files;” should be amended to “downloadable image files containing ___________ [indicate content or subject
matter];” in Class 9
- “Sound recording carriers;” should be amended to “Sound recording carriers, namely, blank __________ [indicate whether “optical”
or “magnetic”] data carriers;” in Class 9 ; “sound recording carriers, namely, pre-recorded ________ [indicate whether “optical” or “magnetic”] data carriers featuring ___________ [describe content
or subject matter];” in Class 9; “sound carriers, namely, downloadable musical sound recordings;” in Class 9; or “sound recording carriers, namely, musical sound recordings;” in Class
9
- “Browser games;” should be amended to “recorded computer game programs for browser games; downloadable computer game programs
for browser games;” in Class 9
- “Data carriers, in particular for games software, image, sound and video files;” should be amended to “blank _______ [indicate
wither “optical” or “magnetic”] data carriers for use with computer game software, image files, sound recordings and video files;” in Class 9 and/or “prerecorded _______ [indicate whether “optical”
or “magnetic”] data carriers featuring computer game software, musical sound recordings, image files containing artwork, text, audio, video, games, still images, and video files;” in Class
9
- “Magnetic data media;” should be amended to “magnetic data media, namely, blank magnetic data carriers;” and/or “prerecorded
magnetic data carriers featuring ______ [indicate subject matter];” in Class 9
- “Compact discs, CD Roms;” should be amended to “Blank compact discs; Blank CD Roms; Pre-recorded compact discs featuring
____________[indicate subject matter]; pre-recorded CD Roms featuring _________ [indicate subject matter];” in Class 9
- “Phonograph records;” should be amended to “phonograph records featuring ___________ [indicate subject matter – such as “music,”
etc. – whatever is accurate and complete];” in Class 9
- “Pre-recorded video cassettes,” should be amended to “pre-recorded video cassettes featuring _________ [indicate subject
matter];” in Class 9
- “Audio cassettes;” should be amended to “blank audio cassettes;” and/or “pre-recorded audio cassettes featuring ______ [indicate
subject matter];” in Class 9
- “Computer and games” should be amended to “computers; downloadable electronic games via the Internet and wireless devices;” in
Class 9. “Games,” with the exception of computer game software and electronic games, generally are classified in Class 28 and must be identified by their common commercial names.
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). 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.
Identification of Goods for Class 16
The identification of goods for Class 16 must be clarified because it is indefinite for purposes of registration. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format to amend the identification, if
accurate:
- “Printed matter, Books, Periodicals, Printed publications, All of the aforesaid goods, including for downloading via the
Internet;” should be amended to “printed matter, namely, __________ [describe the printed matter by the common commercial names of the publications – such as newsletters, journals, magazines, etc. –
whatever is accurate and complete], books, printed periodicals, and printed publications, namely, __________ [list the particular publications by their common commercial names – such as magazines,
books, etc.], all of the foregoing in the field of ____________ [describe subject matter];” in Class 16 and “Downloadable publications, namely, downloadable printed matter, namely, __________
[describe the printed matter by the common commercial names of the publications – such as newsletters, journals, magazines, etc. – whatever is accurate and complete], downloadable books, downloadable
printed periodicals, and downloadable printed publications, namely, __________ [list the particular publications by their common commercial names – such as magazines, books, etc.], all of the
foregoing in the field of ____________ [describe subject matter] and downloadable from the Internet;” in Class 9
- “Graphic representations; Rub down transfers; Stickers; Calendars,” is acceptable in Class 16
- “Cards;” must be amended to describe the particular types of cards, such as “note cards;” or “greeting cards;” in Class
16
- “Posters” is acceptable in Class 16
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). 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.
Identification of Goods for Class 28
The identification of goods for Class 28 must be clarified because it is indefinite for purposes of registration. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format to amend the identification, if
accurate:
- “Games and playthings;” must be amended to list the particular game and playthings by their common commercial names – “games and
playthings, namely, ____________ [list goods by their common commercial names – such as dolls, toy action figures, toy vehicles, play balls, etc. – whatever is accurate and complete];” in Class
28
- “Board games; Parlour games; Card games;” is acceptable in Class 28
- “Video game apparatus;” should be amended to “video game apparatus, namely, video game
consoles, video game machines, and joysticks for video games;” in Class28
- “Role playing games;” is acceptable in Class 28
- “Masks;” must be amended to describe the types of masks. “Protection masks” would be classified in Class 9. “Toy masks, carnival masks, theatrical masks, masquerade masks, Halloween masks;” would be classified in Class 28
- “Costume masks;” is acceptable in Class 28.
- “Card games” is duplicative. See Paragraph 2.
Applicant is advised to delete or modify the duplicate entry in the
identification of goods and/or services in International Class 28 for “card games.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
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). 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.
Identification of Services for Class 41
The identification of services for Class 41 must be clarified because it is indefinite for purposes of registration.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format to amend the identification, if accurate:
- “Publishing services, except printing;” should be amended to “Publishing services, except printing, namely, digital, video, audio and multimedia
publishing services;” in Class 41
- “Providing electronic publications (not downloadable);” should be amended to “Providing on-line non-downloadable electronic publications in the
nature of _____ [indicate the specific types of publications] in the field of ____________ [indicate subject matter];” in Class 41
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.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed
information into the description of the goods and/or services.
- “Provision of on-line computer games;” is acceptable in Class 41
- “Publication of electronic books and journals on-line;” should be amended to “multimedia publishing of on-line electronic books and journals;” in
Class 41
- “Publication of printed matter (including in electronic form) for;” should be amended to “publication of printed matter; multi-media publishing of
on-line electronic printed matter;” in Class 41
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.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the
description of the goods and/or services.
- “Publication of periodicals and books in electronic form, including on the internet;” should be amended to “multimedia publishing of electronic
periodicals and books via the Internet;” in Class 41
- “Production of music, radio plays and audio books;” should be amended to “production of music and radio plays; publishing audio books in the field of
____________[indicate subject matter];” in Class 41
- “Film production services” should be amended to “Media production services, namely, film production;” in Class 41.
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). 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.
Copy of Foreign Registration
Although Applicant has submitted a copy of the EUTM File information for the EU registration, a copy of the EU certificate is needed.
The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a
foreign registration. An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from
an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the
applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals
of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s
country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates
of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the
applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign
registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
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.
Richards, Susan
/Susan A. Richards/
Susan A. Richards
Trademark Examining Attorney
Law Office 103
(571) 272-8266
Susan.Richards@uspto.g
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.