To: | Godot Games GbR (mail@thot-patent.de) |
Subject: | U.S. Trademark Application Serial No. 88379223 - GODOT - HH/GG 1901 |
Sent: | February 27, 2020 11:13:35 AM |
Sent As: | ecom107@uspto.gov |
Attachments: |
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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Correspondence Address:
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Applicant: Godot Games GbR
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Reference/Docket No. HH/GG 1901
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: February 27, 2020
This Office action is supplemental to and supersedes the previous Office action issued on December 4, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: Identification of goods require amendment. See TMEP §§706, 711.02.
In a previous Office action dated December 4, 2019, the trademark examining attorney suspended the application due to the presence of a pending application with an earlier filing date. The examining attorney also suspended the application to await submission of the foreign registration.
Based on applicant’s response, the trademark examining attorney notes that the following requirement have been satisfied: Foreign registration provided. See TMEP §713.02.
In addition, the following refusal has been withdrawn: Prior pending application. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Particular Services Exceed Scope of Foreign Registration
Applicant must respond to all issues raised in this Office action and the previous December 4, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Particular Services Exceed Scope of Foreign Registration – International Class 35
In this case, the U.S. application identifies the particular services in International Class 35 as follows: “Retail services relating to toys and games.”
However, the foreign registration identifies the following International Class 35 services: “Retail services in relation to non electronic games, board games; dice, playing cards, toy figures.”
These services in the U.S. application exceed the scope of the services in the foreign registration because applicant has identified broader retail services in the U.S. application than the ones identified in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these services are within the scope of the foreign registration and should remain in the U.S. application.
Comments
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Faucette, Max/
Trademark Examining Attorney
Law Office 107
(571)270-5655
max.faucette@uspto.gov
RESPONSE GUIDANCE