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: 6/17/2019
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.
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).
IDENTIFICATIONS REQUIRE AMENDMENT
Some of the wording used to describe portions of applicant’s goods and/or services in the identification is indefinite and too broad and could include goods and/or services in
other international classes. This wording must be clarified for the reasons listed below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services. See
TMEP §1402.01. If the goods and/or services have no common commercial or generic name, applicant must describe or explain their nature using clear and succinct
language. See id.
Class 9
- The wording “software” throughout the class is overboard because it can include downloadable software (in class 9) or non-downloadable online software (in class 41).
Applicant must specify which type of software it is.
- The wording “computer software for electronic mail” is indefinite because it fails to specify the purpose or function of the software, namely, in exactly how it helps
with electronic mail.
- The wording “software for television (TV) programming” is indefinite because it fails to specify the purpose or function of the software, namely, in how exactly it helps
with television programming.
- The wording “Game consoles and controllers” is misclassified, and belongs in Class 28, which would need to be added to this application for an additional fee, as
explained below or deleted if applicant chooses not to add an additional class.
Class 35
- The wording “Arranging sponsorships for others” is indefinite because it fails to specify that the sponsorships are for the goods or services of others.
- The wording “Administration and coordination of team leagues in the field of video gaming” is indefinite because it fails to specify that this is done for “others.”
Class 41
- The wording “Entertainment services, namely, providing a web site where users can access and view gaming-related movies” is indefinite and overbroad, because the
word “access” can include services in other classes, such as telecommunications in class 38.
- The wording “Organizing video gaming leagues” is indefinite and overbroad because it does not specify through which medium this is done, such as through “administration
and coordination” which is already listed in class 35, or otherwise.
- The wording “Entertainment services, namely, providing non-downloadable movies and documentaries” is indefinite and overbroad because it fails to specify the medium (a
website, or software, or otherwise) through which this service is being provided.
Class 42
- The wording “Providing temporary use of online non-downloadable software and software as a service featuring software for electronic mail” is indefinite because it fails
to specify the purpose or function of the software, namely, in exactly how it helps with electronic mail.
- The wording “Providing temporary use of non-downloadable computer software for computer graphics” is indefinite because it fails to specify the purpose or function of the
software, namely, in exactly how it helps with (or what it does to/with) computer graphics.
- The wording “Computer hardware, software, application, and network consulting services” is overbroad as it could include services in other classes, such as “consultation
about the repair of computer hardware” class 37. Applicant must specify the nature of the consultation for the hardware.
Applicant may substitute and/or select from the following wording, if accurate:
- Class 009: Downloadable computer software for broadcasting, transmitting, receiving, accessing, viewing, uploading, downloading, sharing,
integrating, encoding, decoding, displaying, formatting, organizing, storing, caching, transferring and streaming of movies; Downloadable computer software for encoding,
decoding, and caching data, text, games, game content, digital media, images, music, audio, video, and animations; Downloadable application programming interface (API) software
for broadcasting, transmitting, receiving, accessing, viewing, uploading, downloading, sharing, integrating, encoding, decoding, displaying, formatting, organizing, storing, caching, transferring and
streaming of movies; Downloadable application programming interface (API) software for encoding, decoding, and caching data, text, games, game content, digital media, images,
music, audio, video, and animations; Downloadable computer software for {specify purpose/action: securing, enabling, sending & receiving
etc.} electronic mail; Downloadable computer software for creating emoticons; Downloadable software development kits (SDK's) for developing
software for broadcasting, transmitting, receiving, accessing, viewing, uploading, downloading, sharing, integrating, encoding, decoding, displaying, formatting, organizing, storing, caching,
transferring and streaming of data, text, games, game content, digital media, images, music, audio, video, movies and animations; Downloadable software for {specify purpose/action e.g., securing, enabling, broadcasting etc.} television (TV) programming; Electronic game, music and movie streaming devices; Computer hardware; Computer hardware
with specialized features for enhanced game playing;
Game consoles and controllers [moved to Class 28 below]; Downloadable character and voice
recognition software; Downloadable computer software for creating, placing, transmitting and measuring the effectiveness of advertisements; Downloadable
software for filtering internet searches; Downloadable software, namely, parental control software for use in restricting access to online videos and games; Video recordings
featuring sports, e-sports, games, video games, video game playing, video game players, video game competitions, action, adventure, animation, art, biography, children's programming, comedy, crime,
drama, family, fantasy, film-noir, history, horror, martial arts, music, mystery, religion, romance, science fiction, suspense, technology, thrillers, war, westerns and young adult programming;
Downloadable music files; Downloadable movies and documentaries featuring sports, e-sports, games, video games, video game playing, video game players and video game competitions; Downloadable movies
in the fields of action, adventure, animation, art, biography, children's programming, comedy, crime, drama, family, fantasy, film-noir, history, horror, martial arts, music, mystery, religion,
romance, science fiction, suspense, technology, thrillers, war, westerns and young adult programming; Downloadable electronic publications, namely, books, magazines, newspapers,
periodicals, newsletters, journals and manuals featuring e-sports, video gaming, video games and video game players recorded on computer media;
- Class 28 [added]: Game consoles and controllers;
- Class 35: Retail store services featuring books and magazines; online retail store services featuring books and magazines; Retail store services featuring gaming
videos, gaming hardware and game software; Retail store services featuring downloadable audio, video, multimedia, emoticons, badges, images and chat colors; retail store services featuring virtual
goods and merchandise for use by members of an online community in connection with a designated website featuring streaming video games and related content; Retail store services featuring game
software enhancements and components; Retail store services featuring consumers electronics, computer and communications hardware and software, and electronic publications; Arranging sponsorships for
the goods and services of others; Administration and coordination of team leagues in the field of video gaming for individuals; Administration and
coordination of recreational opportunities for individuals who wish to participate in team leagues;
- Class 41: Entertainment services, namely, providing a web site featuring
where users can access and view gaming-related movies; Music
production and publishing; Entertainment services, namely, providing a web site for organizing video gaming leagues; Publishing of game software; Publishing of books, electronic
books, magazines, periodicals, literary works, visual works, audio works, and audiovisual works; Publishing of online works of others featuring user-generated text, audio, video, and graphics;
Providing online publications in the nature of books, magazines, periodicals in the field of e-sports, video gaming, video games and video game players; entertainment services, namely, providing
online non-downloadable music tailored to viewer's programming preferences; Entertainment services, namely, providing non-downloadable movies and documentaries via a {specify medium
e.g., website, video-on-demand service, etc.}; Entertainment services, namely, providing online, non-downloadable virtual clothing, colors, badges, tools and weapons for use in virtual
environments created for entertainment purposes; Providing educational training, namely, online tutorials in the field of video gaming and video games;
- Class 42: Providing temporary use of online non-downloadable software and software as a service featuring software for encoding, decoding, and caching data, text,
games, game content, digital media, images, music, audio, video and animations; Providing temporary use of online non-downloadable software and software as a service featuring software for {specify purpose/function e.g., enabling, sending & receiving, etc} electronic mail; Providing temporary use of online non-downloadable software and software as a service featuring
software for creating emoticons; Providing temporary use of online non-downloadable software and software as a service featuring software for television (TV) programming; Providing temporary use of
online non-downloadable software and software as a service featuring software for character and voice recognition; Providing temporary use of online non-downloadable software and software as a
service featuring software for creating, placing, transmitting and measuring the effectiveness of advertisements; Providing temporary use of online non-downloadable software and software as a service
featuring software for filtering internet searches; Providing temporary use of online non-downloadable software and software as a service featuring software for parental control enabling access to
games, including electronic, computer and video games; computer software consulting services in the field of gaming technology and graphics software; computer programming services; Providing
temporary use of non-downloadable computer software for enhancing computer performance, for operation of integrated circuits, semiconductors, computer chipsets and micro-processors; Providing
temporary use of non-downloadable computer software for {specify purpose/function e.g., accessing, designing etc} computer graphics; Platform as a
service (PaaS) featuring computer software platforms for graphic design; Providing virtual computer systems and virtual computer environments through cloud computing; Providing cloud computing
services; Computer services, namely, cloud hosting provider services; Providing virtual computer systems, graphics processing units (GPUs), and virtual computer environments through cloud computing;
Design and development of computer hardware, software and peripherals for others; Hosting of third party digital content in the nature of photos, games, and web sites; Consulting
services in the fields of design, selection, implementation, and use of computer hardware, software, application, and networks
consulting
services; Digital and electronic file data transfer from one computer format to another; Provision of Internet and computer network search engines; Graphic design services; Software maintenance,
installation and update services; Software as a service that allows gamers to live broadcast their games from a gaming console;
Scope Advisory. 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).
ID Manual. 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.
Multiclass Advisory. The application identifies goods and/or
services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or 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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that can be classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only
4 class(es). 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark
Electronic Application System (TEAS) form.
Response guidelines. For this application to
proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence
against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office
Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Joseph Becker/
Trademark Examining Attorney, Law Office 117
United States PTO
(571) 270-5493
Joseph.Becker1@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.
