To: | Epic Games, Inc. (trademarks@parkerpoe.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88392291 - EPIC GAMES - 29945-00001 |
Sent: | 5/24/2019 4:36:35 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88392291
MARK: EPIC GAMES
|
|
CORRESPONDENT ADDRESS: PARKER POE ADAMS & BERNSTEIN LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Epic Games, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 5/24/2019
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.
Search Results – Prior Pending Applications
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 marks in the referenced applications. 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.
Disclaimer
In this case, applicant must disclaim the wording “GAMES” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The goods and services are “Downloadable virtual reality game software; Recorded virtual reality game software; Downloadable virtual reality software for access to an online virtual environment; Recorded virtual reality software for access to an online virtual environment; Downloadable software for providing access to an online multimedia virtual environment; Recorded software for providing access to an online multimedia virtual environment; Downloadable computer software for use in creating, manipulating and participating in virtual environments; Recorded computer software for use in creating, manipulating and participating in virtual environments; Downloadable computer software for providing access to an online virtual environment; Recorded computer software for providing access to an online virtual environment; Downloadable virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, and emotes for use in virtual environments created for entertainment purposes; Recorded virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, and emotes for use in virtual environments created for entertainment purposes; Downloadable virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, and emotes for use in online virtual worlds; Recorded virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, and emotes for use in online virtual worlds; Downloadable computer software for use in designing and creating other computer software; Recorded computer software for use in designing and creating other computer software; Downloadable computer software development tools; Recorded computer software development tools; Downloadable software development kits (SDK); Recorded software development kits (SDK);” “Virtual reality game services provided on-line from a computer network; Entertainment services, namely, providing an online multimedia virtual environment; Virtual reality services provided on-line from a computer network; Entertainment services, namely, providing on-line, non-downloadable virtual environments created for entertainment purposes; Entertainment services, namely, providing on-line, non-downloadable virtual goods, namely avatars, clothing, pets, vehicles, weapons, tools, toys, and emotes for use in virtual environments created for entertainment purposes; Entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure, or entertainment purposes;” and “Computer services, namely, hosting an on-line multimedia virtual environment; design and development of multimedia and virtual environment software; Computer programming services, namely, content creation for virtual worlds and 3D platforms; Providing temporary use of on-line non-downloadable software development tools;” and it shows that this term is descriptive of the type of goods and nature of the services offered. Thus, the wording merely describes applicant’s goods and services because it indicates to the consumer the exact type of goods offered and a feature of the services offered.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GAMES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Contact Information
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.
Katina Jackson
/Katina S. Jackson/
Trademark Examining Attorney
Law Office 104
571-272-8889 (Office)
katina.jackson@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.