To: | Marvel Characters, Inc. (trademarks@disney.com) |
Subject: | U.S. Trademark Application Serial No. 88419777 - TOY BIZ - N/A |
Sent: | July 20, 2019 03:21:00 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88419777
Mark: TOY BIZ
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Correspondence Address: |
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Applicant: Marvel Characters, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 20, 2019
SEARCH
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).
In this case, applicant must disclaim the wording “TOY” 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. 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 attached evidence from an online dictionary shows this wording means “something that provides amusement.” Thus, when the term “toy” in the applicant’s mark is used in relation to the applicant’s goods, it merely informs consumers that the applicant provides goods, such as its game software, microphones and mobile applications that are provided for amusement.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “TOY” 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.
IDENTIFICATION
Applicant applied for the following: Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; digital media; audio books; audio and visual recordings; video game software; computer programs and software; downloadable electronic publications; downloadable game software; downloadable mobile applications; consumer electronics and accessories therefor; eyeglasses and sunglasses and accessories therefor; binoculars; decorative magnets; graduated rulers; microphones; helmets; flotation vests; protective face masks not for medical purposes; snorkels; swimming goggles; swim masks
Applicant must further clarify wording in the identification because it is indefinite and must be revised to list intended goods by common commercial name or phrasing that clearly identifies the intended goods for notice and search purposes. See TMEP §§1402.01, 1402.03. Notably, software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software. For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.
Applicant may adopt the following identification, if accurate:
CLASS 9: Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; Digital media, namely, {indicate form of the goods, e.g., CDs, DVDs, downloadable audio files, etc.} featuring {indicate subject matter or field}; audio books in the field of {indicate subject matter}; audio and visual recordings featuring {indicate subject matter}; recorded video game software; computer programs and software recorded, for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; downloadable electronic publications in the nature of {indicate specific nature of publication e.g. magazines, newsletters, books, etc.} in the field of {indicate subject matter of publication}; downloadable video game software; downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; consumer electronics and accessories therefor, namely, (list the common commercial name of the goods and accessories); eyeglasses and sunglasses and accessories therefor, namely, (specify common commercial name of the goods e.g. cases for spectacles and sunglasses, and sunglass chains and cords); binoculars; decorative magnets; graduated rulers; microphones; Helmets, namely, {specify type of helmet e.g. football helmets, riding helmets, sports helmets, etc.}; flotation vests; protective face masks not for medical purposes; snorkels; swimming goggles; swim masks.
CLASS 41: Providing online non-downloadable video game software; providing on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}
Note, if applicant accepts the suggested identification(s), Applicant must amend the application to classify the goods or services in the listed International Class. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Identification Manual
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Amending Identification/Broadening Scope
MULTIPLE 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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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.
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.
How to respond. Click to file a response to this nonfinal Office action
/S. Young/
Trademark Examining Attorney
Law Office 117
(571) 272-9713
skye.young@uspto.gov
RESPONSE GUIDANCE