To: | Valiant Entertainment LLC (nzoubek@rlfllp.com) |
Subject: | U.S. Trademark Application Serial No. 88403975 - SHADOWMAN - N/A |
Sent: | July 11, 2019 03:03:43 PM |
Sent As: | ecom124@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. 88403975
Mark: SHADOWMAN
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Correspondence Address: |
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Applicant: Valiant Entertainment LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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PRIORITY ACTION
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: July 11, 2019
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.
Applicant must address issues shown below. On July 10, 2019, the examining attorney and Nancy Zoubek discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
The identification of goods for International Class 28 contains wording that must be clarified because indefinite or too broad such that it could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In particular, the wording “manipulative toys” must be clarified by indicating the type of toys, such as games or puzzles.
Similarly, the wording “equipment sold as a unit for playing games” must be clarified by describing the type of games the equipment is for.
Further, the wording “sporting articles” is too broad because it could include a wide array of articles, including sports helmets in International Class 9; sports uniforms in International Class 28; and apparatus of playing sports such as balls in International Class 28.
For example, applicant may adopt the following wording, if accurate:
International Class 9: sporting articles, namely, {specify goods in Class 9, e.g., sports helmets}
International Class 25: sporting articles, namely, {specify goods in Class 25, e.g., combative sports uniforms}
International Class 28: Toys, including games and playthings, namely, action figures and accessories therefor; playsets for action figures; plush toys; balloons; games,
namely, board games, card games, action skill games; educational development skill games; playing cards; toy vehicles; dolls; manipulative toys, namely, {specify
type of toys, e.g., manipulative games, manipulative puzzles}; toy trains, toy musical instruments, toy kitchens, toy kitchen utensils; plastic and vinyl toy characters; apparatus for
electronic games other than those adapted for use with an external display screen or monitor; home video game machines; hand-held video game machine; electronic educational game machines for
children; equipment sold as a unit for playing {specify type of games, e.g., board, card, kickball, tossing and catching} games; hand-held game units for
playing electronic games for use with external display screen or monitor; game equipment sold as a unit for playing board games and card games; stand-alone video output games machines; sporting
articles, namely, {specify goods in Class 28, e.g., balls for sports, sleds, table tennis paddles}; game equipment sold as a unit for playing a board game;
stand alone video output game machines; slot machines; ride-on toys; gaming equipment, namely, slot machines with or without video output; jigsaw and manipulative puzzles; swimming floats for
recreational use; toy sets in the nature of toy construction sets; sporting articles; Christmas tree ornaments and decorations; Halloween costume masks
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.
Multiple-Class Application Requirements
(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 are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one 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.
Advisory on Moving Goods and Services between Companion Applications
Section 1402.08 of the Trademark Manual of Examining Procedure sets forth the conditions under which, the applicant may amend to move items of goods or services from one application to another if an applicant has filed separate applications to register the same mark.
In particular, the application from which the item is to be moved must be filed on or before the filing date of the application to which it is to be moved. TMEP §1408.08.
The amendment will be permitted only if some of the goods/services in one application should be classified in a different class and the companion application includes that class. Id.
Moving goods/services between applications in this way may only be done if neither of the marks involved has been approved for publication in the Official Gazette. Id.
Goods/services can be moved between applications only in applications filed under §1 or §44 of the Trademark Act. In applications under §1, the applicant may request to move goods/services under a §1(b) basis to a companion application that includes goods/services in the same class, but which are under a §1(a) basis, or vice versa. Id.
The applicant must file a separate amendment for each application, that is, a request to delete specified goods/services in the application from which they are to be moved, specifying the serial number of the application to which they should be added, and an amendment in the application to which those goods/services are to be added, specifying the serial number of the application from which they are to be moved. Id. It is noted that the amendments may be accomplished with an Examiner’s Amendment if both of the subject applications are being handled by the same examining attorney.
For this application to proceed further, 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
How to respond. Click to file a response to this nonfinal Office action.
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.
/April A. Hesik/
Examining Attorney
Law Office 124
(571) 272-4735
april.hesik@uspto.gov
RESPONSE GUIDANCE