Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 21, 2020

 

This Office action responds to applicant’s communication dated December 11, 2019 where applicant:

(1)    Argued against the Section 2(d) refusal;

(2)    Amended the identification of goods and services.

The examining attorney reviewed the applicant’s response and determined the following:

(1)   The Section 2(d) refusal is obviated because RN 4286242 is now cancelled.

(2)   The goods and services remain indefinite and too broad. Therefore, the requirement is maintained and made final.

The following is a Summary of Issues that applicant must address:

 

• Identification of Goods and Services Indefinite – Amendment Required

 

 

REQUIREMENTS

 

Applicant must also respond to the following requirements:

 

Identification of Goods and Services Indefinite – Amendment Required

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

The wording “Downloadable computer software to enable the uploading, posting, showing, displaying, tagging, blogging, sharing and other presentation of items of media or information that are in electronic format via an interactive electronic user interface, in the fields of virtual social network communities, electronic gaming, entertainment, and general interest via the internet and other communications networks in the nature of a global computer network with third parties” in the identification of goods is indefinite and must be clarified because the function of the software is unclear. The wording “to enable” is not sufficiently clear, as it could refer to communication between software platforms or the ability of a user to perform these functions, for example. Additionally, the wording “other presentation of items of media or information” must be further clarified. Applicant must further explain the meaning of “other presentation” by describing specific function of the applied-for software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “Entertainment in the nature of golf tournaments; Entertainment in the nature of sports events; Entertainment in the nature of athletic competitions” in the identification of services is indefinite and must be clarified because it does not indicate the services that is provided, rather, it merely indicates the field in which the services are provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, if the service is organizing, arranging, or conducting sporting events, the type of sporting event must be indicated.

 

The USPTO requires such specificity in identifying goods and services in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Applicant may substitute the following wording, if accurate (examiner’s suggestions in bold italics):

 

Class 09 - Downloadable computer game software; Downloadable electronic game programs; Downloadable computer game programs; Downloadable interactive game programs; Downloadable computer software platforms for on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications; Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications, provided via computer and communication networks; Downloadable video game software; Downloadable video game programs; Downloadable computer software platforms for social networking; Downloadable interactive video game programs; Downloadable electronic game programs; Downloadable computer software platforms for social networking that may be accessed via the internet, computers, computer operating systems and wireless devices; Downloadable computer software  [clarify the specific function of the software, e.g. that enables users to upload, post, show, display, tag, blog, and share electronic media via an interactive electronic user interface, in the fields of virtual social network communities, electronic gaming, entertainment, and general interest via the internet and a global computer network, with third parties]; Downloadable computer programs for video and computer games; Downloadable electronic game software for cellular telephones; Downloadable electronic game software for wireless devices; Downloadable electronic game software for use with social networking applications and on social networking websites

 

Class 41 - Arranging and conducting athletic competitions; Entertainment in the nature of [specify service provided, e.g., organization, conducting, and operation of] golf tournaments; Entertainment in the nature of sports events, namely, [specify service, e.g., arranging, organizing, and conducting golf tournaments, providing facilities for sports events, providing information relating to sporting events, etc.]; Entertainment in the nature of [specify service provides, e.g., arranging, conducting, and operation of, providing information about, providing facilities for, etc.] athletic competitions; Entertainment in the nature of arranging and conducting competitions in the field of athletic events and sports events, namely, land-based sports competitions, online sports competitions and combinations thereof; Entertainment services, namely, arranging and conducting of athletic events and sports events in the nature of land-based sports tournaments, online sports tournaments and combinations thereof, land-based sports competitions, online sports competitions and combinations thereof, land-based sports exhibitions, online sports exhibitions and combinations thereof, nationally and internationally, such events being rendered live and through broadcast media including television and radio, and via a global computer network and a commercial on-line service; Entertainment services, namely, providing online computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications via the Internet; Providing information on-line relating to games enhancements within computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; Providing online reviews of computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Entertainment services, namely, providing computer model of reality in the nature of virtual reality game services in which users can interact through social games for recreational, leisure or entertainment purposes on-line from a computer network; Production and distribution of motion pictures; Production and distribution of radio programs; Production and distribution of television shows and movies; Production of cable television programs; Providing news and information in the field of sports; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programs; Providing online computer games in the form of game applications that are compatible with use on social network platforms, mobile electronic devices, personal electronic devices, portable electronic devices and computer gaming platforms; Providing interactive computer games and online computer gaming via internet website portal; Providing online electronic games by means of the Internet; Conducting and providing facilities for e-sports gaming contests and tournaments; Providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; Radio program syndication; Television program syndication; Betting services; Gambling services; Wagering services; Educational services, namely, conducting classes, seminars and workshops in the field of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing of information relating to computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; On-line gaming services, namely, providing online computer games, and online electronic games; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Organizing and conducting contests in the nature of online electronic gaming competitions and tournaments featuring e-sports and featuring games of chance for entertainment purposes; Organizing, conducting and operating live gaming contests in the nature of online electronic gaming competitions and tournaments featuring e-sports and featuring games of chance for entertainment purposes

 

Advisory: Applicant Cannot Broaden the Scope of the Goods and Services

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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.

Advisory: TEAS Plus and TEAS RF Requirements

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.  

Responding to this Office Action

Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

If applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

 

 

 

/John T. Billings/

Examining Attorney

Law Office 113

(571) 272-0186

john.billings@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 21, 2020 for

U.S. Trademark Application Serial No. 88411068

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/John T. Billings/

Examining Attorney

Law Office 113

(571) 272-0186

john.billings@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 21, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”