To: | Godot Games GbR (mail@thot-patent.de) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88379223 - GODOT - HH/GG 1901 |
Sent: | 6/28/2019 1:08:11 PM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88379223
MARK: GODOT
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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: Godot Games GbR
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 6/28/2019
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
· Prior Pending Application
· Identification of Goods Requires Amendment
Search of Office Records – Prior Pending Application
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Identification of Goods and Services Requires Amendment
Applicant submitted the following identification of goods and services with the application:
International Class 9
Mobile apps; computer software for games; computer programs for games; gaming software for use with computers; downloadable, interactive entertainment software for playing computer games; gaming software
International Class 28
Games, board games; dice games; playing cards; electronic games; toy figures
International Class 35
Retail Services relating to toys and games
International Class 42
Toy design; design of games; design of board games
The above bolded wording in the identification of goods and services requires amendment because it does not identify the goods and services with enough specificity to make clear the scope of the goods and services offered by applicant. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Therefore, the identification of goods and services as submitted with the application requires the following amendments.
International Class 9
The term “mobile apps” is indefinite because the nature and purpose of the goods is unclear. Applicant must make clear what the nature of the goods are, as well as their intended purpose.
The references to “software” and “programs” are indefinite and overbroad. Software that is downloadable or recorded is classified in International Class 9, while non-downloadable or online software is classified in International Class 42. Applicant must clarify the nature of the software and programs identified.
International Class 42
Therefore, applicant must specify the type of game and, if electronic, the medium in which it is provided (e.g., game software in International Class 9, downloadable game programs in International Class 9, electronic interactive board games for use with an external monitor in International Class 28, providing temporary use of non-downloadable electronic games in International Class 41, providing online non-downloadable game software in International Class 41). See TMEP §§1402.01, 1402.03.
International Class 42
The wording “design of games” is indefinite because it is not clear what service applicant is providing. Also, the nature of the intended product is also unclear. Applicant must provide additional clarity as to the exact type of service provided as well as the nature of goods to be produced.
Applicant may adopt the following identification of goods and services, if accurate:
International Class 9
Downloadable mobile apps for {indicate specific purpose for mobile applications}; downloadable computer software for games; downloadable computer programs for games; downloadable gaming software for use with computers; downloadable, interactive entertainment software for playing computer games
International Class 28
Games, namely, {indicate specific types of games e.g. chess games, arcade games, ring games}, board games; dice games; playing cards; electronic games, namely, {indicate the type of games e.g. electronic dart games, hand-held electronic video games, electronic board games}; toy figures
International Class 35
Retail Services relating to toys and games
International Class 42
Toy design; design of games, namely, {indicate specific type of games e.g. video game design, toy action figure design}; design of board games
Applicant may amend the identification to clarify or limit the goods or services, but not to broaden or expand the goods 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 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.
Comments
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.
/Faucette, Max/
Trademark Examining Attorney
Law Office 107
(571)270-5655
max.faucette@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.