To: | Marvel Characters, Inc. (trademarks@disney.com) |
Subject: | U.S. Trademark Application Serial No. 88419785 - TOY BIZ - N/A |
Sent: | July 20, 2019 03:19:54 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. 88419785
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 toys 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.
The identification of goods contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
The wording “toys, games and playthings” in the identification is indefinite, too broad, and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., sex toys in International Class 010, pet toys in International Class 028, downloadable videogames in International Class 009). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “gymnastic and sporting articles (except clothing)” in the identification is indefinite, too broad, and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., gymnastics rings in International Class 028, sporting rifles in International Class 013). Id.
The wording “skins for covering and protecting apparatus” in the identification is indefinite, too broad, and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., fitted plastic films known as skins for covering and protecting electronic apparatus namely mobile phones in International Class 009, fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles in International Class 028). Id.
Applicant may adopt the following identification, if accurate, in Class 28:
“Toys, games and playthings, namely, __________ {indicate specific goods in International Class 028, e.g., coin operated video games, pet toys, water toys, infant toys, card games}; gymnastic and sporting articles except clothing, namely, __________ {indicate specific goods in International Class 028, e.g., gymnastic rings, appliances for gymnastics, spring boards, sports ball rebounder}; hand-held units for playing electronic games for use with or without an external display screen or monitor; fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, __________ {indicate specific items, e.g., video game consoles, hand-held video game units}; paper party favors; paper party hats; Christmas stockings; Christmas tree ornaments and decorations; snow globes”
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