Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  September 25, 2019

 

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.  

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

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).

 SUMMARY OF ISSUES: 

• Amendment to the Identification of Goods and Services
• Multiple-Class Application Advisory

IDENTIFICATION OF GOODS AND SERVICES

Applicant must clarify the wording as set forth below because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  International Class 028: Toys, games and playthings; Gaming devices; Mobile gaming devices; and Portable gaming devices is indefinite because the wording does not (1) specify the type of toys, games and playthings, {e.g., stuffed toys, pet toys, board games, and playthings, namely, puppet theatres, etc.}, or the type of gaming devices, {e.g., gaming machines, slot machines, slot machines, bingo machines, with or without video ouput}; Gaming peripherals, namely, {specify the peripherals, e.g., game controllers, joysticks, etc.}; Virtual reality headsets adapted for use in playing augmented reality video games; and Virtual reality headsets and helmets adapted for use in playing video games” must be reclassified to International Class 009. [Under Nice 11-2017, “virtual reality headsets” are classified in International Class 009 regardless of their purpose.].

 

 

Applicant must clarify the wording as set forth below because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  International Class 041: Broadcasts of e-sports and other gaming events {must reclassify the services in International Class 038 because broadcast services are classified in 038}; Entertainment services {applicant must specify the type of entertainment services}; Entertainment services, namely, arranging and conducting of competitions {specify the type of competitions} for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware;

 

Gaming-related promotional, educational, training, management, and design services

 

{applicant must specify the nature and specifics of each type of service indicated above

 

(Promotional: See sample from the TM ID MANUAL:

 

035	Promoting annual post-season intercollegiate football games of others

 

(Educational: educational services, namely, classes and seminars in the field of gaming), (Training: providing online training games {specify the type of games, e.g., brain training games}); (Management: specify the type of management and how it relates to games/gaming {most management services are provided in International Class 035}), (Design: Designing games for others {specify the type of games, e.g. video games} (International Class 042))

 

Organization of games and e-sports tournaments {indicate type of sport or competition, e.g., golf, poker, soccer, etc.}

 

Organizing contest and incentive award programs; See TM ID MANUAL samples regarding optional classifications: 

 

041	Educational services, namely, providing incentives to {indicate specific group, e.g., people, organizations, etc} to demonstrate excellence in the field of {indicate non-business related field} through the issuance of awards
042	Providing a web site featuring technology that enables companies and organizations to administer and manage employee incentiveaward programs and to promote employee productivity, performance, recognition and morale

 

Organizing, promoting and conducting exhibitions, trade shows and events for business purposes {must reclassify these services in International Class 035}

 

((Downloadable (009) or Temporary Use of Non-Downloadable (042)) Computer software for gaming purposes in the nature of providing online video games; Electronic games services provided by means of the internet {must reclassify these services in either 009 or 042 depending upon wording set forth above}

 

Education services, namely, {specify the nature of the educational services, i.e., the means of education, e.g., classes, seminars, etc., and the field or subject matter}

 

Applicant may substitute the following wording, if accurate: 

 

International Class 028

 

Hand-held units for playing electronic, computer, interactive, and video games; Toys, games and playthings; Gaming devices; Mobile gaming devices; Portable gaming devices; Amusement game machines; Electronic games other than those adapted for use with television receivers only; Electronic gaming machines for use with an external display screen or monitor; Electronic video game machines other than those adapted for use with an external display screen or monitor for receipt, storage and transmission of text, graphics and multimedia content; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Arcade video game machines; Computer game consoles for use with an external display screen or monitor; Computer game joysticks; Hand held joy stick units for playing video games; Video game joysticks; Gaming mice; Gaming keypads; Gaming peripherals, namely, {specify the peripherals, e.g., gaming controllers, joysticks, etc.}; Computer gaming consoles for recreational game playing; Video game consoles; Video game interactive hand held remote controls for playing electronic games; Video game interactive remote control units; Video game machines; Video gaming consoles for playing computer games; Video output game machines for use with external display screen or monitor; Video output game machines for use with televisions; Electronic game equipment with a watch function; Face plates for video game consoles for use with external monitors; Game controllers for computer games; Game controllers in the nature of keyboards for computer games; Games adapted for use with television receivers; Gaming devices and mobile gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Gaming headsets adapted for use in playing video games; Virtual reality headsets adapted for use in playing augmented reality video games; Virtual reality headsets and helmets adapted for use in playing video games; Audio and visual headsets for use in playing video games; Hand-held electronic games adapted for use with television receivers only; Handheld game consoles; Hand-held games with liquid crystal displays; Hand-held units for playing electronic games for use with external display screen or monitor; Hand-held units for playing electronic, computer, interactive, and video games; Home video game machines; LCD game machines; Player-operated electronic controllers for electronic video game machines; Portable games with liquid crystal displays; Standalone video game machines; Tabletop units for playing electronic games other than in conjunction with a television or computer; Fitted covers specially adapted to protect video game consoles for use with an external display screen or monitor; Fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles and hand-held video game units; floor-standing units for playing electronic games other than in conjunction with a television or computer; Bags specially adapted for handheld video games and video game consoles; Protective carrying cases specially adapted for handheld video games and video game consoles; Protective covers specially adapted for electronic game playing apparatus, namely, video game consoles and hand-held video game units; Stands for electronic game playing apparatus, namely, video game consoles and hand-held video game units

 

International Class 041

 

Arranging and conducting competitions and facilitating events for video gamers and computer game players; Arranging and conducting of workshops in the field of computer programming, electronic, computer and video games, media, multi-media and communications processors and related software; Arranging and conducting of workshops related to gaming and gaming hardware; Broadcasts of e-sports and other gaming events; Entertainment services; Entertainment services, namely, arranging and conducting competitions and facilitating events for players of electronic or interactive multimedia games; Entertainment services, namely, arranging and conducting of competitions for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware; Entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via the internet or communications networks; Entertainment services, namely, providing access to online computer and video games; Entertainment services, namely, providing an internet website portal featuring online video and electronic games; Entertainment services, namely, providing computer games via a global computer network; Entertainment services, namely, providing electronic games on-line; Entertainment services, namely, providing non-downloadable on-line interactive computer games, on-line interactive virtual reality games, on-line computer games, on-line virtual reality games, and on-line multi-player electronic computer games; Gaming-related promotional, educational, training, management, and design services; Organization of games and e-sports tournaments; Organizing contest and incentive award programs; Organizing exhibitions in the field of interactive entertainment, consumer electronics and video game entertainment industries for cultural or educational purposes; Organizing recreational sports and cultural activities; Organizing, promoting and conducting exhibitions, trade shows and events for business purposes; Platform as a service (PaaS) featuring computer software platforms for playing computer and video games; Platform as a service (PaaS) featuring software platforms for providing online electronic gaming; Computer software for gaming purposes in the nature of providing online video games; Electronic games services provided by means of the internet; Providing non-downloadable interactive multiplayer computer and video games; Providing non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; Providing online non-downloadable computer software for gaming purposes in the nature of providing online video games; Providing online non-downloadable electronic game software; Rental of video games; Software as a service (SaaS) featuring software platforms for electronic gaming; Virtual reality arcade services; Virtual reality game services provided on-line from a computer network; Consulting services in the field of gaming technology; Education services; Education services, namely, providing non-downloadable courses of instruction and training in the use of electronic computer and video games; Education services, namely, providing training sessions in the field of computer electronics and computer programming at trade shows and computer and developer conferences, and providing training-course materials used together therewith

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 and/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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Response guidelines (PARTIAL).  For this application to proceed, 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.

 

If applicant does not timely respond to this Office action, the following goods and services will be deleted from the application: International Class 028: Toys, games and playthings; Gaming devices; Mobile gaming devices; Portable gaming devices; Gaming peripherals, namely, {specify the peripherals, e.g., gaming controllers, joysticks, etc.}; Virtual reality headsets adapted for use in playing augmented reality video games; Virtual reality headsets and helmets adapted for use in playing video games and International Class 041: Broadcasts of e-sports and other gaming events; Entertainment services; Entertainment services, namely, arranging and conducting competitions and facilitating events for players of electronic or interactive multimedia games; Entertainment services, namely, arranging and conducting of competitions for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware; Gaming-related promotional, educational, training, management, and design services; Organization of games and e-sports tournaments; Organizing contest and incentive award programs; Organizing, promoting and conducting exhibitions, trade shows and events for business purposes; Computer software for gaming purposes in the nature of providing online video games; Education services.  See TMEP §718.02(a).

 

In such case, the application will then proceed with the following goods in International Class 028:  Hand-held units for playing electronic, computer, interactive, and video games; Toys, games and playthings; Gaming devices; Mobile gaming devices; Portable gaming devices; Amusement game machines; Electronic games other than those adapted for use with television receivers only; Electronic gaming machines for use with an external display screen or monitor; Electronic video game machines other than those adapted for use with an external display screen or monitor for receipt, storage and transmission of text, graphics and multimedia content; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Arcade video game machines; Computer game consoles for use with an external display screen or monitor; Computer game joysticks; Hand held joy stick units for playing video games; Video game joysticks; Gaming mice; Gaming keypads; Gaming peripherals, namely, {specify the peripherals, e.g., gaming controllers, joysticks, etc.}; Computer gaming consoles for recreational game playing; Video game consoles; Video game interactive hand held remote controls for playing electronic games; Video game interactive remote control units; Video game machines; Video gaming consoles for playing computer games; Video output game machines for use with external display screen or monitor; Video output game machines for use with televisions; Electronic game equipment with a watch function; Face plates for video game consoles for use with external monitors; Game controllers for computer games; Game controllers in the nature of keyboards for computer games; Games adapted for use with television receivers; Gaming devices and mobile gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Gaming headsets adapted for use in playing video games; Virtual reality headsets adapted for use in playing augmented reality video games; Virtual reality headsets and helmets adapted for use in playing video games; Audio and visual headsets for use in playing video games; Hand-held electronic games adapted for use with television receivers only; Handheld game consoles; Hand-held games with liquid crystal displays; Hand-held units for playing electronic games for use with external display screen or monitor; Hand-held units for playing electronic, computer, interactive, and video games; Home video game machines; LCD game machines; Player-operated electronic controllers for electronic video game machines; Portable games with liquid crystal displays; Standalone video game machines; Tabletop units for playing electronic games other than in conjunction with a television or computer; Fitted covers specially adapted to protect video game consoles for use with an external display screen or monitor; Fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles and hand-held video game units; floor-standing units for playing electronic games other than in conjunction with a television or computer; Bags specially adapted for handheld video games and video game consoles; Protective carrying cases specially adapted for handheld video games and video game consoles; Protective covers specially adapted for electronic game playing apparatus, namely, video game consoles and hand-held video game units; Stands for electronic game playing apparatus, namely, video game consoles and hand-held video game units; and the following services in International Class 041: Arranging and conducting competitions and facilitating events for video gamers and computer game players; Arranging and conducting of workshops in the field of computer programming, electronic, computer and video games, media, multi-media and communications processors and related software; Arranging and conducting of workshops related to gaming and gaming hardware; Broadcasts of e-sports and other gaming events; Entertainment services; Entertainment services, namely, arranging and conducting competitions and facilitating events for players of electronic or interactive multimedia games; Entertainment services, namely, arranging and conducting of competitions for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware; Entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via the internet or communications networks; Entertainment services, namely, providing access to online computer and video games; Entertainment services, namely, providing an internet website portal featuring online video and electronic games; Entertainment services, namely, providing computer games via a global computer network; Entertainment services, namely, providing electronic games on-line; Entertainment services, namely, providing non-downloadable on-line interactive computer games, on-line interactive virtual reality games, on-line computer games, on-line virtual reality games, and on-line multi-player electronic computer games; Gaming-related promotional, educational, training, management, and design services; Organization of games and e-sports tournaments; Organizing contest and incentive award programs; Organizing exhibitions in the field of interactive entertainment, consumer electronics and video game entertainment industries for cultural or educational purposes; Organizing recreational sports and cultural activities; Organizing, promoting and conducting exhibitions, trade shows and events for business purposes; Platform as a service (PaaS) featuring computer software platforms for playing computer and video games; Platform as a service (PaaS) featuring software platforms for providing online electronic gaming; Computer software for gaming purposes in the nature of providing online video games; Electronic games services provided by means of the internet; Providing non-downloadable interactive multiplayer computer and video games; Providing non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; Providing online non-downloadable computer software for gaming purposes in the nature of providing online video games; Providing online non-downloadable electronic game software; Rental of video games; Software as a service (SaaS) featuring software platforms for electronic gaming; Virtual reality arcade services; Virtual reality game services provided on-line from a computer network; Consulting services in the field of gaming technology; Education services; Education services, namely, providing non-downloadable courses of instruction and training in the use of electronic computer and video games; Education services, namely, providing training sessions in the field of computer electronics and computer programming at trade shows and computer and developer conferences, and providing training-course materials used together therewith.  See TMEP §718.02(a). 

 

MULTIPLE CLASS APPLICATION ADVISORY

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b):

 

(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 4 or more potential classes; however, applicant submitted a fee(s) sufficient for only 2 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 Sections 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/C. Dionne Clyburn/

C. Dionne Clyburn

LO 110

571-272-9358

dionne.clyburn@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 September 25, 2019 for

U.S. Trademark Application Serial No. 88497660

 

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. 

 

 

/C. Dionne Clyburn/

C. Dionne Clyburn

LO 110

571-272-9358

dionne.clyburn@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 September 25, 2019, 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.”