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:  October 07, 2019

 

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.

 

 

SUMMARY OF ISSUES:

• Partial Section 2(d) Refusal – Likelihood of Confusion With Regard to Specified Goods and Services
• Advisory - Potential Section 2(d) Refusal Based Upon Prior-Filed Applications
• Requirement to Amend Identification of Goods and Services
• Requirement to Provide Translation of Non-English Wording in the Mark

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGARD TO SPECIFIED GOODS AND SERVICES

 

 

Applicant has applied to register the mark ARMAMOBILE “cellular phones; mobile phones; pre-paid phone cards; downloadable computer application software for cellular and mobile phones; downloadable computer and electronic game software for use on cellular and mobile phones” in International Class 9; “wireless communication services; telecommunication services” in International Class 38; and “entertainment services, namely, providing games on-line and in mobile wireless form” in International Class 41.

 

Please be aware that the stated refusal refers only to the following goods and services and does not bar registration for any other goods and services listed in the application:

 

International Class 9: downloadable computer application software for cellular and mobile phones; downloadable computer and electronic game software for use on cellular and mobile phones

 

International Class 41: entertainment services, namely, providing games on-line and in mobile wireless form

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3600438, 3828263 and 3912986.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The cited marks, all owned by the same registrant, are listed below:

 

 

Reg. No.	MARK	OWNER	RELEVANT GOODS AND/OR SERVICES	CLASS
3600438	ARMA COMBAT OPERATIONS	Bohemia Interactive	Computer and video game discs and software, computer and video game discs and software for multi-player video gaming via worldwide and local computer networks, computer and video game discs and software for interactive video gaming, downloadable computer game and video game software, downloadable computer and video game software for multi-player video gaming via worldwide and local computer networks, downloadable software for playing interactive computer and video games, and each of the forgoing sold as a unit with manuals   Entertainment services, namely, providing an on-line computer game service provided by computer terminals; providing online computer games via network between communications networks; providing online game services via worldwide and local computer networks; providing multi-player video gaming via worldwide and local computer networks; providing on-line web logs, articles and editorial publications in the field of computer gaming	9                               41
3828263	ARMA II	Bohemia Interactive	Computer and video game discs and software, computer and video game discs and software for multi-player video gaming via worldwide and local computer networks, computer and video game discs and software for interactive video gaming, downloadable computer game and video game software, downloadable computer and video game software for multi-player video gaming via worldwide and local computer networks, downloadable software for playing interactive computer and video games, and each of the forgoing sold as a unit with manuals	9
3912986	ARMA	Bohemia Interactive	Computer and video game discs and software, computer and video game discs and software for multi-player video gaming via worldwide and local computer networks, computer and video game discs and software for interactive video gaming, downloadable computer game and video game software, downloadable computer and video game software for multi-player video gaming via worldwide and local computer networks, downloadable software for playing interactive computer and video games, and each of the forgoing sold as a unit with manuals   Entertainment services, namely, providing an on-line computer game service provided by computer terminals; providing online computer games via network between communications networks; providing online game services via worldwide and local computer networks; providing multi-player video gaming via worldwide and local computer networks; providing on-line web logs, articles and editorial publications in the field of computer gaming	9                                   41

 

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

 

In the present case, the following factors are most relevant: similarity of the marks, relatedness of the goods and services, and similarity of the trade channels of the goods and services.

 

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is confusingly similar with the registered marks because the marks share the wording ARMA.  First, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).  In this case, the common wording ARMA in the compared marks has the potential to be used in exactly the same manner.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, the common wording in the marks is likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id. 

 

Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the wording “COMBAT OPERATIONS” in the mark in Reg. No. 3600438 is descriptive of registrant’s goods and services, and has been disclaimed.  Additionally, applicant provides “mobile phones”, and “games online in mobile form”.  Thus, the wording MOBILE in the applied-for mark is likely to be perceived as merely descriptive of a feature of applicant’s goods and services and not distinctive.  Accordingly, the terms “COMBAT OPERATIONS” in the registered mark and “MOBILE” in the applied-for mark are less significant in terms of affecting the marks’ commercial impressions, and render the wording ARMA the more dominant element of the respective marks.

 

 

Furthermore, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.  Importantly, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from the marks.

 

Accordingly, applicant’s mark and the registered marks are confusingly similar.

 

 

Relatedness of the Goods and Services

 

Applicant’s mark is ARMAMOBILE for, in relevant part, “downloadable computer application software for cellular and mobile phones; downloadable computer and electronic game software for use on cellular and mobile phones” in International Class 9 and “entertainment services, namely, providing games on-line and in mobile wireless form” in International Class 41.

 

The cited marks are listed below:

 

 

Reg. No.	MARK	OWNER	RELEVANT GOODS AND/OR SERVICES	CLASS
3600438	ARMA COMBAT OPERATIONS	Bohemia Interactive	Computer and video game discs and software, computer and video game discs and software for multi-player video gaming via worldwide and local computer networks, computer and video game discs and software for interactive video gaming, downloadable computer game and video game software, downloadable computer and video game software for multi-player video gaming via worldwide and local computer networks, downloadable software for playing interactive computer and video games, and each of the forgoing sold as a unit with manuals   Entertainment services, namely, providing an on-line computer game service provided by computer terminals; providing online computer games via network between communications networks; providing online game services via worldwide and local computer networks; providing multi-player video gaming via worldwide and local computer networks; providing on-line web logs, articles and editorial publications in the field of computer gaming	9                               41
3828263	ARMA II	Bohemia Interactive	Computer and video game discs and software, computer and video game discs and software for multi-player video gaming via worldwide and local computer networks, computer and video game discs and software for interactive video gaming, downloadable computer game and video game software, downloadable computer and video game software for multi-player video gaming via worldwide and local computer networks, downloadable software for playing interactive computer and video games, and each of the forgoing sold as a unit with manuals	9
3912986	ARMA	Bohemia Interactive	Computer and video game discs and software, computer and video game discs and software for multi-player video gaming via worldwide and local computer networks, computer and video game discs and software for interactive video gaming, downloadable computer game and video game software, downloadable computer and video game software for multi-player video gaming via worldwide and local computer networks, downloadable software for playing interactive computer and video games, and each of the forgoing sold as a unit with manuals   Entertainment services, namely, providing an on-line computer game service provided by computer terminals; providing online computer games via network between communications networks; providing online game services via worldwide and local computer networks; providing multi-player video gaming via worldwide and local computer networks; providing on-line web logs, articles and editorial publications in the field of computer gaming	9                                   41

 

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Moreover, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording “downloadable computer application software for cellular and mobile phones; downloadable computer and electronic game software for use on cellular and mobile phones”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “downloadable computer game and video game software, downloadable computer and video game software for multi-player video gaming via worldwide and local computer networks, downloadable software for playing interactive computer and video games, and each of the forgoing sold as a unit with manuals.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

In Re. Reg. Nos. 3600438 and 3912986

 

Similarly, the application uses broad wording “entertainment services, namely, providing games on-line and in mobile wireless form”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “entertainment services, namely, providing an on-line computer game service provided by computer terminals; providing online computer games via network between communications networks; providing online game services via worldwide and local computer networks; providing multi-player video gaming via worldwide and local computer networks.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

 

 

Accordingly applicant’s and registrant’s goods and services are sufficiently related for purposes of the likelihood of confusion analysis.

 

 

Conclusion

 

Since applicant’s mark and the registered marks are confusingly similar and their goods and services are sufficiently related, registration of applicant’s mark must be refused under Trademark Act Section 2(d) with regard to the goods and services specified.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

ADVISORY – APPLICANT’S RESPONSE OPTIONS TO PARTIAL REFUSAL

 

Applicant may respond to the stated refusals by submitting evidence and arguments against the refusals.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods and services to which the refusals pertain; or

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

ADVISORY - POTENTIAL SECTION 2(d) REFUSAL BASED UPON PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87235120, 88400356 and 88233860 precede applicant’s filing date.  See attached referenced applications:

 

Serial No.	MARK	OWNER	RELEVANT GOODS AND/OR SERVICES	CLASS
87235120	ARMA	Arma International Ltd	Telecommunication services, namely, telecommunication access services, digital network telecommunications services, transmission of webcasts and podcasts, providing electronic message alerts via the internet, personal communication services and, providing multiple-user access to a global computer network, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; communication services for the electronic transmission of voices; electronic transmission of data; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; electronic transmission of data, audio, video and multimedia files; simulcasting broadcast television over global communication networks, the Internet and wireless networks; provision of telecommunication access to video and audio content provided via an online video-on-demand service; satellite communication services; telecommunications gateway services	38
88233860	ARMA INSTRUMENTS	Arma Instruments AG	Wireless communication devices for voice, data, or image transmission   Provision of wireless application protocol services including those utilizing a secure communications channel, namely, voice of internet protocol (VOIP) services	9       38
88400356	ARMA G1	Arma Instruments AG	Wireless communication devices; Communication apparatus and instruments   Provision of wireless application protocol services including those utilising a secure communications channel	9         38

 

 

As discussed above, Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Thus, if the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered 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 applications.

 

 

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 marks in the referenced applications.  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.

 

 

However, if applicant responds to the refusal and/or presents arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications, applicant also must respond to the requirements set forth below.

 

 

REQUIREMENT TO AMEND IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services, where specified below, is indefinite and must be clarified because the nature of the goods and services, and their purpose or function have not been specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods and services have no common commercial or generic name, regarding goods, applicant must describe the product, its main purpose, and its intended uses, and regarding services, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant should note the following additional guidance:

 

International Class 9:

 

Applicant must clarify the wording “pre-paid phone cards” in the identification of goods and/or services in International Class 9 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the goods is not clear.  Further, this wording could identify goods in more than one international class.  For example, “pre-paid phone calling cards, magnetically encoded” are in International Class 9 and “pre-paid phone calling cards, not magnetically encoded” are in International Class 16.  Therefore, applicant must amend the identification to clarify the nature of goods intended by the wording and ensure proper classification.

 

 

In addition, the identification for “downloadable computer application softwarefor cellular and mobile phones” in International Class 9 is indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 

 

The USPTO requires such specificity 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).

 

 

International Class 38:

 

The wording “wireless communication services” in the identification of services is indefinite and must be clarified because the nature of the wireless communication services has not been specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Additionally, applicant must clarify the wording “telecommunication services” in the identification of goods and/or services in International Class 9 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the telecommunications services has not been specified.  Further, this wording could identify goods in more than one international class.  For example, “telecommunications network management services, namely, the operation and administration of telecommunication systems and networks of others” are in International Class 35; “telecommunications reseller services, namely, telecommunications air time brokerage services” and “telecommunications air time brokerage services” are in International Class 36;  “telecommunication services, namely, wireless telephony and wireless broadband communications services for the transmission of voice and data”, “telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks and the internet” and  “telecommunication services, namely, transmission of podcasts” are in International Class 38  and “satellite telecommunications technology service to allow efficiencies of the carrier by creating efficient use of bandwidth on a satellite transponder” are in International Class 42.  Therefore, applicant must amend the identification to clarify the nature of services intended by the wording and ensure proper classification.

 

 

International Class 41:

 

The wording “entertainment services, namely, providing games on-line and in mobile wireless form” in the identification of services is indefinite and must be clarified because the nature of the games has not been specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

 

Applicant may adopt the following wording, if accurate (proposed amendments in bold):

 

International Class 9: Cellular phones; mobile phones; pre-paid phone {indicate type of cards, e.g., calling} cards, {specify nature of cards to ensure proper classification, e.g., magnetically encoded}; downloadable computer application softwarefor cellular and mobile phones, namely, software for {specify function of software, e.g., use in database management; use in electronic storage of data}; downloadable computer and electronic game software for use on cellular and mobile phones

 

International Class 16: pre-paid phone {indicate type of cards, e.g., calling} cards {specify nature of cards to ensure proper classification, e.g., not magnetically encoded}{reclassified from Class 9 if accurate}

 

International Class 35: {specify nature of Class 35 telecommunications services if accurate, e.g., telecommunications network management services, namely, the operation and administration of telecommunication systems and networks of others; managing telecommunication networks for others, namely, managing telephone service for other carriers}{reclassified from Class 38 if accurate}

 

International Class 36: {specify nature of Class 36 telecommunications services if accurate, e.g., telecommunications reseller services, namely, telecommunications air time brokerage services; telecommunications air time brokerage services}{reclassified from Class 38 if accurate}

 

 

International Class 38: {specify nature of wireless communication services provided, e.g., wireless broadband communication services; wireless communication services, namely, transmission of graphics to mobile telephones}; {specify nature of telecommunications services, e.g., telecommunication services, namely, wireless telephony and wireless broadband communications services for the transmission of voice and data; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks and the internet; telecommunication services, namely, transmission of podcasts; telecommunication access services}

 

International Class 41: entertainment services, namely, providing {indicate types of games provided, e.g., computer games, card games, poker games, board games, video games} on-line and in mobile wireless form

 

 

International Class 42: {specify nature of Class 42 telecommunications services if accurate, e.g., satellite telecommunications technology service to allow efficiencies of the carrier by creating efficient use of bandwidth on a satellite transponder}{reclassified from Class 38 if accurate}

 

 

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.  See TMEP §1402.04.

 

 

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 Section 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 7 classes; however, applicant submitted fees sufficient for only 3 classes.  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.

 

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

Applicant should note the following additional requirement.

 

 

REQUIREMENT TO PROVIDE TRANSLATION OF NON-ENGLISH WORDING IN THE MARK

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark ARMA.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “ARMA” in the mark is “WEAPON”.  TMEP §809.03.  See attached translation evidence from Globse.

 

 

 

RESPONSE GUIDELINES 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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  

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@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 October 07, 2019 for

U.S. Trademark Application Serial No. 88516965

 

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. 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@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 October 07, 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.”