To: | Kamico Instructional Media, Inc. (rdewanipdocket@jw.com) |
Subject: | U.S. Trademark Application Serial No. 88450755 - STAARCADE - 124570.00064 |
Sent: | August 19, 2019 04:15:17 PM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) Regarding Applicant’s Trademark Application
U.S. Application Serial No. 88450755
Mark: STAARCADE
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Correspondence Address: 100 CONGRESS AVENUE, SUITE 1100
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Applicant: Kamico Instructional Media, Inc.
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Reference/Docket No. 124570.00064
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: August 19, 2019
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
The filing date of pending U.S. Application Serial No. 88117085 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
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 Amend The Identification
Applicant must clarify some of the wording in the identification, as shown below, because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the goods. Further, it is overly broad because it encompasses goods in more than one international class.
The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed.
Wording that appears within brackets offers guidance. And wording that should be deleted is shown with a line through it as follows: strikethrough. Applicant should enter amendments in
standard font, not in bold, italics or strikethrough or within brackets.
Applicant may adopt the following identification, if accurate:
“Educational board games and Interactive downloadable and recorded {or
choose one, as appropriate} computer software for use in educating children and adults in the fields of science, math, reading, spelling, grammar, composition, social studies, and fine arts,”
in International Class 9; and
“Educational board games and interactive computer software for use in educating children and adults in the fields of science, math, reading, spelling,
grammar, composition, social studies, and fine arts,” in International Class 28.
For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable ID Manual. See TMEP §1402.04.
Multi-Class Application Requirements
(1) List the goods 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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes. However, applicant submitted a fee sufficient for only one class. 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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
TEAS RF Application 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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.
Applicant is invited to contact the assigned examining attorney with any questions regarding this action.
Trademark Examining Attorney
Law Office 115
571.270.1528
katherine.chang@uspto.gov
RESPONSE GUIDANCE
· If needed, find contact information for the supervisor of the law office referenced in the signature block.