| To: | Games Workshop Limited (jordan.lavine@flastergreenberg.com) |
| Subject: | U.S. Trademark Application Serial No. 88518875 - WARHAMMER - N/A |
| Sent: | October 09, 2019 02:17:30 PM |
| Sent As: | ecom101@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88518875
Mark: WARHAMMER
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Correspondence Address: 1835 MARKET STREET, SUITE 1050
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Applicant: Games Workshop Limited
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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: October 09, 2019
Search for Conflicting Marks
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
SUMMARY OF ISSUES:
Requirement -- Identification of Goods and Services
The identification of goods and services is indefinite and must be clarified because it contains parentheses, duplicative wording, typographical errors (“scrapper” instead of “scraper”), and broad categories of goods and services that require further clarification as to the nature, purpose, field of use, subject matter, material composition and/or common commercial name. The identification also includes items classified in the incorrect class and items classified in multiple International Classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The following are examples of acceptable identifications: “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25. Therefore, applicant must amend the identification to specify the type of clothing. If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). Similarly, the word “headgear” in the identification of goods must be clarified because it is indefinite and too broad without further clarification. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This word is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, this word could include “sports helmets” in International Class 9, “orthodontic headgear” in International Class 10, “headwear” in International Class 25, or “headwear for dolls” in International Class 28. Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic headgear in International Class 10; and headgear, namely, sports caps in International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
In addition, the identification of goods and/or services 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 and/or services.
Applicant may adopt the following identification, if accurate (changes in bold):
“mordants for metals for use in connection with arts and crafts, miniatures, models and games,” in International Class 1;
“Paints, varnishes, lacquers; coating preservatives which preserve against rust and deterioration of wood; colorants; mordants for wood and leather for use in connection with arts and crafts, miniatures, models and games; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; printers’ ink,” in International Class 2;
“Hand tools, namely, sculpting tools, namely, a sculpting knife, cutting pliers, drills, files and mold line removers,
namely, scrapers scrappers for use in connection with arts and crafts, miniatures and models, war games, skirmish games, role playing games, battle
games, and fantasy/science fiction games; structural parts and fittings for all of the aforesaid goods; tableware, namely, knives, forks and spoons,” in International Class 8;
“<specify whether downloadable or recorded on computer media> Computer games programs;
<specify whether downloadable or recorded on computer media> computer games software; <specify whether downloadable or recorded on computer media> <specify whether downloadable or recorded on computer media> video
games software; <specify whether downloadable or recorded on computer media> computer programs for gaming;
<specify whether downloadable or recorded on computer media> computer gaming software and computer hardware apparatus with
multimedia and interactive functions; <specify whether downloadable or recorded on computer media> mobile computer application gaming software computer gaming software applications; <specify whether downloadable or recorded on computer media> application gaming software; <specify whether downloadable or recorded on computer media> computer programs for accessing, browsing and searching online databases;
<specify whether downloadable or recorded on computer media> computer software for creating and playing war games, skirmish
games, role playing games, battle games, and fantasy/science fiction games; <specify whether downloadable or recorded on computer
media> interactive multimedia computer games programs; <specify whether downloadable or recorded on computer
media> interactive games programs; computer game discs, video game discs, downloadable computer game software, computer game software downloadable from a global computer network,
downloadable electronic games via the Internet and wireless devices; <specify whether downloadable or recorded on computer
media> interactive multimedia computer game programs; pre-recorded records, discs, tapes, cassettes, and cartridges all containing sound recordings, video recordings, data, images,
games, programs and information in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and fantasy and science fiction; pre-recorded USB cards
featuring sound recordings, video recordings, data, images, games, programs and information in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games,
and fantasy and science fiction; DVDs featuring content all being pre-recorded in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and fantasy
and science fiction; downloadable MP3 files all being pre-recorded in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and fantasy and science
fiction; <specify whether downloadable or recorded on computer media> computer screen saver software; downloadable
digital audio, video and electronic data files featuring content in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and fantasy and science
fiction provided from a computer database or the Internet; electronic book readers in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and
fantasy and science fiction; audio books in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and fantasy and science fiction; video disks and
video tapes with recorded animated cartoons; downloadable wallpaper graphics for desktop computer and mobile devices; downloadable ringtones for mobile phones, downloadable image files in the field
of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and fantasy and science fiction; downloadable music files; mouse mats; downloadable electronic
publications, namely, manuals, books, art books, painting guides, rule books, codexes, journals, magazines, brochures, newsletters, pamphlets, information flyers, information sheets, instruction
sheets, comics, novels, novellas all in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and fantasy and science fiction; instructional and
teaching apparatus, namely, <specify whether downloadable or recorded on computer media> educational software
featuring instruction in the field of video games, computer gaming, modelling, painting; computer hardware; computer hardware for use with video and computer game consoles; computer peripherals for
use with video and computer game consoles; memory cards for use with video and computer game consoles, hard drives for computers and video game consoles; headsets for use with computers; audio-visual
computer cables; wireless computer network adapters; computer cameras being webcams; headphones; stereo headphones; in-ear headphones; measuring apparatus and instruments, namely, tape measures,
measuring and graduated rulers, measuring templates for use in the setting up and playing of war games, skirmish games, role playing games, battle games, and fantasy/science
fiction games; photographic, cinematographic, optical, measuring, signalling, checking in the nature of supervision (supervision) apparatus, namely, <specify goods by common commercial name>; sound recording and sound reproducing apparatus and instruments; mechanisms for coin or token
operated apparatus; <specify whether blank or pre-recorded and, if the latter, specify subject matter> CDs, CD ROMs; <specify whether blank or
pre-recorded and, if the latter, specify subject matter> video cassettes; gramophone and phonographic records in the field of <specify subject matter>; downloadable
and streamable audio and video recordings in the field of <specify subject matter, e.g., music>; downloadable ring tones, MP3s, graphics,
games and video images for wireless mobile communication devices; <specify whether downloadable or recorded on computer
media> screen savers software; downloadable pre-recorded audio and audiovisual content, information, and commentary in the field of <specify
subject matter>; downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals, and other publications in the field of <specify subject
matter>; downloadable smart phone application software <specify function of software and, if content-specific, the field of use> applications
(software); downloadable software in the nature of a mobile application for playing games, gaming or gambling; blank magnetic tapes for recording or reproducing sound or
vision; <specify whether blank or pre-recorded and, if the latter, specify subject matter> recording discs; magnetic tapes for recording and
reproducing sound or vision; audio recordings in the field of <specify subject matter>; recorded programmes for television and for radio in the
field of <specify subject matter>; motion picture films about <specify subject matter>; photographic transparencies and photographic and cinematographic films
about <specify subject matter> prepared for exhibition purposes; computers; PDAs (personal digital assistants); <specify whether downloadable or recorded on computer media> electronic mail and messaging software; electronic bulletin boards for displaying
messages; <specify whether downloadable or recorded on computer media> computer application software for mobile
phones, smart phones and tablet devices featuring mobile phone functionality for <specify function of software and, if content-specific, the field of use>;
<specify whether downloadable or recorded on computer media> computer application software for mobile devices, internet
browsers, set-top boxes, electronic readers, and tablet computers, namely, software for video games and general interest software applications for shopping, rental of products, product comparison,
entertainment, news, music and videos; <specify whether downloadable or recorded on computer media> game
software; <specify whether downloadable or recorded on computer media> interactive game software; pre-recorded games
on CD, software, video, mini discs; <specify whether blank or pre-recorded and, if the latter, specify subject matter> magnetic data carriers; magnetically encoded payment cards, credit cards, charge cards, debit cards and blank smart cards; magnetically encoded telephone cards;
encrypted blank smartcards; encoded blank smartcards; encoded blank cards for <specify purpose or field of
use>; magnetically encoded magnetic identity cards; computer mice; keyboard and computer screen covers;
customised blank computer disks and CD-ROMs; radios; televisions; plasma screens; binoculars; photographic apparatus and equipment, cameras, video cameras and parts and fittings
therefor; camera films; barometers; telephones, mobile phones, smartphones and video phones and transmitters, receivers, covers, cases, fascia, holders, chargers, speakers, headsets,
hands-free-kits, <specify whether downloadable or recorded on computer media> software <specify function of software and, if content specific, the field of use>, sounds cards in the nature of computer hardware, graphics cards in
the nature of computer hardware, data input devices and media storage devices in the nature of <specify goods by common commercial name> therefor; covers and cases for
mobile telephones and laptop, notebook and tablet computers and PDAs; holders adapted for mobile phones; straps for mobile phones; covers and cases adapted for PDAs, MP3 players, laptops and gaming
devices; earphones; mobile phone headsets and hands-free kits; batteries; battery chargers; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable
broadcasts, namely, <specify items by common commercial name, e.g., audio receivers>; tape recorders; cassette players; record players; MP3 players and MP3 readers; audio
and/or video file recorders and/or players; remote control apparatus for <specify devices controlled>; digital photo frames; magnets; fridge magnets; compasses;
anti-dazzle spectacles shades; glasses and sun glasses and cases, chains, cords and frames therefor; visors for helmets; containers for contact
lenses; optical goods, namely, <specify items by common commercial name, e.g., eyeglasses and sunglasses>; mechanical signs; neon signs; scales; time clocks; cyclists
helmets; magnifying glasses; <specify type, e.g., fire, anti-theft> alarms; thermometers; hologram apparatus holograms;
protective clothing especially made for use in laboratories articles of protective clothing, footwear and
headgear; protective helmets; sports helmets; sign boards, namely, electronic signs; parts and fittings for all the aforesaid goods; shooting sticks,
namely, <specify items by common commercial name, e.g., selfie sticks, tripods for cameras>; swim floats for safety purposes,” in
International Class 9;
“Outdoor lighted Christmas-themed ornaments,” in International Class 11;
“Printed matter, namely, posters, manuals, books, art books, rule books, codexes, journals, magazines, brochures,
newsletters, pamphlets, information flyers, information sheets, instruction sheets, comics, novels, novellas in the field of war games, skirmish games, role playing games, battle games,
fantasy/science fiction games, and fantasy and science fiction; printed publications, namely, manuals, books, art books, rule books, codexes, journals, magazines, brochures, newsletters, pamphlets,
information flyers, information sheets, instruction sheets, comics, novels, novellas in the field of war games, skirmish games, role playing games, battle games, fantasy/science fiction games, and
fantasy and science fiction; photographs; stationery; adhesives for stationery or household purposes; art paper, drawing paper, craft paper, heat transfer paper; artists' materials, namely, artists'
brushes, pastels, pens, pencils, gesso in the nature of plaster and modelling clay; paint brushes; paint boxes for use in schools; painting sets for artists
and children; drawing instruments; drawing templates; drawing rulers; arts, craft and modelling materials, namely, art and craft paint kits, colour art and craft sand, art and craft glue for
household use, moulds for modelling clay; coloured craft and art sand; printed instructional and teaching material not being apparatus in the field of war games, skirmish games, role playing games,
battle games, and fantasy/science fiction games; plastic materials for packaging, namely, plastic film being blister packs and clam packs for use as wrapping and packaging material for use in
relation to war games, skirmish games, role playing games, battle games, and fantasy/science fiction games; printers' type; printing blocks; adhesive stickers; adhesive transfers; diaries; calendars;
address books; greeting cards; collectable trading cards; decals; maps; posters; newspapers, periodical publications in the nature of <specify nature of goods> in the field of
<specify subject matter>; newspapers, periodical publications in the nature of <specify nature of goods> in the field of <specify subject matter>; printed
publicity and promotional material of others <note: material promoting one’s own goods or services are not considered “goods in trade”>; printed programmes for <specify subject matter>; booklets in the field of <specify subject matter>; leaflets in the field of <specify subject
matter>; comic books; bookbinding material; programme binders; printed instructional and teaching materials in the field of <specify subject
matter>; greetings cards; postcards; notepads; writing pads; drawing pads; jotters; photograph albums; autograph books; jotters; erasers; pencil sharpeners;
drawing rulers; book markers; gift bags; gift wrapping paper; gift tags; envelopes, labels; set-squares; carrier bags in the nature of textile shopping
bags; personal organisers; stickers; sticker books; gift vouchers; paper weights; paper napkins; decalcomanias; paper and cardboard coasters; paper and cardboard place mats;
paper table cloths and napkins; beer mats; facial tissues; paintings framed or unframed; pens; folders; pads, namely, <specify items by common commercial
name, e.g., notepads, desk pads>; printed height charts; party invitations; office requisites, namely, <specify items by common commercial name, e.g.,
staplers, paper trimmers, staple removers>; scrap books; catalogues in the field of <specify subject matter>; paper files and folders; bookends; trading cards; collectors' cards; stencils; printed charts; printed wall charts; printed
tickets; printed timetables; printed forms; printed certificates; printed menus; printed gift vouchers for goods and services of others; philatelic stamps; paper flags and pennants; paper banners; signs and advertisement boards of paper and cardboard; letter trays; letter openers; writing
instruments; pencil sharpeners; cases and boxes for pens and pencils; pen and pencil holders; writing ink; ink pads; rubber stamps; prints and pictures; art prints; graphic
prints, representations and reproductions; lithographs; engravings and etchings; portraits; paper towels; paper handkerchiefs; toilet paper; money clips; money clips of precious metals; cheque book
holders; printed holograms; bags, namely, <specify items by common commercial name, e.g., merchandise bags, plastic bags for packaging>; paper or plastic shopping bags; paper
lunch bags; desktop business card holders,” in International Class 16;
“Trunks and travelling bags; cases, namely, <specify items by common commercial name, e.g., leather
cases, attaché cases, travel cases>; suitcases; articles of luggage; garment bags for travel; brief cases; bags, namely, <specify items by common commercial name, e.g.,
overnight bags, all-purpose carrying bags>; sports bags; athletic bags; gym bags; boot bags; umbrellas, parasols and walking sticks; umbrella covers; shooting
sticks; boot bags; holdalls; back packs; holdalls; rucksacks; duffel bags; beach bags; school bags and satchels; handbags; shoulder bags; tote bags; shopping bags
of mesh, canvas or textile; toiletry bags sold empty toilet bags; wallets; purses; coin purses; key cases; purses; card
holders; wash bags sold empty for carrying toiletries; dog leads and chokers; collars, covers, leads and leashes for animals; shopping bags; luggage
straps; baby changing bags; reins for guiding children; lunch bags; Leather and imitations of leather, and goods made of these materials, namely,
<specify items by common commercial name, e.g., leather and imitation leather sold in bulk, leather purses, leather wallets> and not included in other
classes,” in International Class 18;
“Enameled glass for building,” in International Class 19;
“Plaques of <indicate plastic, wax, wood>; Christmas decorations of plastic, wax or wood not in the nature of Christmas tree decorations,” in International Class 20;
“Household or kitchen utensils and containers, namely, <specify items by common commercial name,
e.g., kitchen containers, serving scoops, household containers for foods>; glassware, porcelain, pottery and earthenware, namely, <specify items by common commercial name,
e.g., beverage glassware, earthenware mugs> not included in other classes; chinaware, namely, <specify items by common commercial name, e.g.,
statuettes, busts, and figurines made of china>; cookware, namely, <specify types of cookware>; coffee services in the nature of tableware;
combs; sponges for household purposes; articles for cleaning purposes, namely, <specify items by common commercial name, cleaning cloths, cleaning sponges, cleaning mitts of
fabric>; household gloves for general use; plates; commemorative plates; egg cups; coffee pots; non-metallic cookery moulds for <specify use, e.g.,
cakes, pancakes, cupcakes, pudding>; bread and cutting boards; glass storage jars; drinking vessels; non-electric coolers for food and drinks; ice cube moulds; beverage bottle buckets; glass stoppers; cocktail shakers; drinking straws; stands for bottles; menu card holders; name card holders; napkin holders; cutlery
holders; condiment holders; salt cellars; toothpick holders and toothpicks; serving trays; bottle openers; corkscrews; decanters; mugs; fitted picnic baskets picnic sets; drinking glasses, namely, tumblers; drinking glasses; brushes, namely, <specify items by common
commercial name, e.g., cosmetic brushes, file brushes, dusting brushes>; non-metallic money boxes and piggy banks; lunch boxes; tankards and hip flasks; drinking flasks; vacuum flasks; garden
gnomes in the nature of statues made of earthenware; drinking glasses; champagne flutes; beer mugs; heat insulated containers for beverages; general purpose
storage bins for household use; bottle openers; bottles sold empty; plastic sports bottles sold empty; decorative art objects made of glass, ceramic, china, earthenware or porcelain; plaques, statuettes, figurines, works of art, ornaments, models and trophies, all of glass, ceramic, china,
earthenware or porcelain; model stadia of glass, ceramic, china, earthenware or porcelain; enamelled glass not for building; candlesticks; toothbrushes; holders for
toothbrushes; soap boxes and holders; fitted vanity cases; cosmetic powder compacts sold empty; picnic baskets sold empty; fitted
picnic baskets; picnic boxes sold empty; picnic crockery, namely, pots, dishes, drinking cups and saucers, bowls, serving bowls and trays; napkin holders
and rings; paper plates; paper cups; plastic cups; tea caddies and tea services in the nature of tableware; teapots; tea cosies; flower pots; shaving brushes and shaving brush
stands/holders; vases; coasters not of paper or textile; baby beakers, namely, wide-mouthed drinking cups for household use; plaques of glass, ceramic, china, earthenware or porcelain; oven mitts gloves; pet feeding dishes; cool bags in the nature of thermal insulted containers for food or beverages; non-metal baskets for domestic use; clothes-pegs; serving trays of precious
metal; cool bags; goblets of precious metal; lunch bags not of paper; Christmas decorations of glass, ceramic, china, earthenware or
porcelain not in the nature of Christmas tree decorations,” in
International Class 21;
“laundry wash bags,” in International Class 22;
“Clothing, namely, <specify items by common commercial name, e.g., pants, shirts, t-shirts,
jackets>, footwear, headwear headgear; sports clothing, namely, <specify items by common commercial name, e.g., pants, shirts, t-shirts,
jackets>; tracksuits; training pants; waterproof clothing, namely, <specify items by common commercial name, e.g., pants, shirts, t-shirts, jackets>; articles of
underclothing; lingerie; hosiery; shirts; shorts; t-shirts; socks; sweatshirts; sweatpants; jackets; coats; fleeces, namely, <specify items by common commercial name, e.g., fleece
jackets, fleece shirts>; shirts; polo shirts; vests; singlets; blouses; knitwear, namely, <specify items by common commercial name, e.g., shirts, sweaters>;
jerseys; jumpers; pullovers; sweaters; hooded tops; cardigans; shorts; leggings; skirts; ties; cravats; underwear; boxer shorts; briefs; thongs; lingerie; nightwear; pyjamas; night shirts; dressing
gowns; bathrobes; beach clothes, namely, <specify items by common commercial name, e.g., swimsuits, t-shirts, beach cover-ups>; swimwear; swim suits; bathing trunks;
bathing caps; socks; gloves; mittens; scarves; ear muffs; wristbands as clothing; belts; braces; aprons in the nature of clothing (clothing); uniforms; ready-made clothes linings being parts of clothing (parts of clothing); shoes; boots; sandals; slippers;
sports shoes; training shoes; football boots and shoes; studs for football boots; hats; caps being clothing; visors in the nature of clothing; headbands;
sweat bands; articles of clothing, footwear and headgear for babies and children , namely, <specify items by common commercial name, e.g., pants, shirts, t-shirts,
jackets>; bodysuits; romper suits; sleep suits; children's and infants' cloth bibs; baby boots,” in International Class
25;
“Games, namely, table top battle games in the nature of war games, skirmish games, role playing games, battle games, and
fantasy/science fiction games and playing equipment sold as a unit therewith; playthings namely, playing pieces in the nature of miniature figures, model figures and model vehicles for use with table
top battle games in the nature of war games, skirmish games, role playing games, battle games, and fantasy/science fiction games; toys, namely, playing pieces in the nature of miniature figures,
model figures and model vehicles for use with table top battle games in the nature of war games, skirmish games, role playing games, battle games, and fantasy/science fiction games; role playing
games; board games; playing cards and card games; dice; counters for games; miniatures and models, namely, miniature fantasy and science fiction toy figurines and scale model kits; tabletop hobby
battle games in the nature of war games; tabletop hobby battle games in the nature of war games, skirmish games, role playing games, battle games, and fantasy/science fiction games and playing
equipment sold as a unit therewith; tabletop games; science fiction board games; models in kit form, namely, scale model kits for use in war games, skirmish games, role playing games, battle games,
and fantasy/science fiction games; cases adapted for carrying miniatures and model playing pieces for use in war games, skirmish games, role playing games, battle games, and fantasy/science fiction
games; toy model hobby craft kits for constructing toy model landscapes, scenery and action figures; miniature landscapes, scenery, buildings and vehicles for use in war games, battle games, fantasy
games, hobby games, skirmish games, table top games, science fiction games, role playing games; video games machine and video games consoles; electronic game machines; protective plastic covers
specially adapted for computer game consoles; video and computer game interactive remote control units; video and computer game joysticks; video and computer game interactive control floor pads or
mats; gymnastic and sporting articles, namely, <specify items by common commercial name, e.g., gymnastic apparatus, footballs, basketballs>; apparatus for use in
sports, namely, <specify items by common commercial name, e.g., gymnastic apparatus, footballs, basketballs>; balls for sport; playing balls; footballs; goal posts;
miniature footballs; miniature replica football kits; exercise apparatus, namely, <specify items by common commercial name, e.g., gymnastic apparatus, exercise machines>;
tables for indoor football; goal keeper gloves; gloves for games; shin guards; knee guards; elbow guards; cases and bags adapted for carrying sporting articles; articles for playing golf, namely, <specify items by common commercial name, e.g., golf clubs, golf balls>; golf balls; golf tees; golf ball markers; golf bags; golf club covers; golf gloves; golf bag
trolleys; articles for playing darts, namely, <specify items by common commercial name, e.g., dart boards>; darts; sporting articles for use in playing snooker, namely, <specify items by common commercial name, e.g., snooker equipment>; snooker tables; pool tables; sledges for use in down-hill amusement rides;
fishing tackle; dominoes; marbles; dolls; action figure toys; soft sculpture toys; teddy bears; puppets; bathtub toys; inflatable toys; ride-on toys; toy vehicles; flying discs;
electronic hand held game units; home video game machines and amusement apparatus all for use with television receivers; controllers and joysticks for use with home video game machines; playing
cards; jigsaw puzzles; toy models, modeled toy plastic figurines; kites; costume masks; costumes being children's playthings; party novelty hats; sponge hands in the nature of
novelties; baby rattles; novelty toys for playing jokes and party novelty toys novelties; confetti; balloons; conjuring
apparatus, namely, <specify items by common commercial name>; skittles; Christmas tree decorations; decorations for Christmas trees; Christmas
crackers; synthetic Christmas trees and stands; toy mobiles; bath time ducks; Santa sack, namely, <specify items by common commercial name>;
Christmas stockings; snow globes; car hangers, namely, <specify items by common commercial name>; flying discs; swim floats for recreational use; parts and fittings for all of the aforesaid goods,” in International Class 28;
“Providing on-line registration services for the identification of individuals on a global computer network for <specify purpose, e.g., for participation in online game tournaments>; compilation of information in to databases; compilation of information for publishing on the internet or
a global computer network for business or commercial purposes; advertising text publication services; direct mail advertising; distribution of samples for
publicity purposes; organisation of exhibitions for commercial or advertising purposes; advisory services relating to establishment and operation of franchises; provision of assistance in the
establishment and operation of <specify type of> franchises, namely, <specify>; Retail store services, department store retail services, mail
order retail services and online retail store services in the field connected with the sale of perfumery, toiletries and
cosmetics, pharmacy goods, paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins, metals in foil and powder form for
painters, decorators, printers and artists, paints, hand tools, hardware and metal goods, cutlery, household domestic products including white goods, computers, computer software, computer
peripherals, computer games, video games, electronic games, computer games software, video games software, videos, DVDs and CDs, optical and photographic goods, sunglasses, telephones and mobile
phones, lighting equipment and fixtures, televisions, audio equipment, signs and signage, printed publications and materials, magazines, books, guides, diaries, greeting cards, giftwrap, jewellery,
watches and clocks, fashion accessories, leatherwear and articles made from leather or imitation leather, bags, travel goods, belts, clothing, lingerie, footwear, hair accessories, furniture, garden
furniture, furnishings and decorations, household textile products, namely, curtains, blinds and wall coverings, bedding, bed linen and table linen, towels, kitchenware, crystal, earthenware,
glassware, porcelain and chinaware, ornaments, carpets and rugs, toys, games and playthings, fitness equipment, decorations, food and drink, pet products, tobacco goods, smoker's requisites,
bicycles; print and radio advertising; advertising including on-line advertising services, promoting the goods and services of others promotional, public
relations; publication of publicity texts,” in International Class 35;
“Arranging and conducting seminars, exhibitions, expositions, competitions, conventions and conferences in the field of <specify subject matter and/or type of competitions>; providing museum facilities; social club services, namely, arranging, organizing, and
hosting social events, get-togethers, and parties for club members club services (entertainment and/or education); gaming
services in the nature of <specify, e.g., casino gambling, conducting online computer game tournaments>; on-line gaming services in the nature of
<specify, e.g., casino gambling, conducting online computer game tournaments>; entertainment services, namely, <specify services by common commercial name, e.g.,
providing an on-line computer game, organization of game competitions and game events>; entertainment services in the area of computer gaming, namely, <specify services by
common commercial name>; entertainment services, namely, providing on-line computer games, tips and strategies for computer games; arranging and conducting computer game competitions;
arranging of games; provision of games, namely, <specify services by common commercial name, e.g., providing game facilities, providing information on-line relating to computer
games and computer enhancements for games>; rental of gaming apparatus; rental of game, show and stage scenery; electronic games services provided by means of the
Internet; providing online nondownloadable computer games Internet games (non-downloadable); provision of online games by means of a computer based
system; game services provided on-line from a computer network; entertainment services, namely, providing on-line computer games, providing online computer games that may be
accessed via a global computer network, providing online news and information in the field of games; educational and training services relating to fantasy, science fiction, war games, skirmish games,
role play games, battle games, and fantasy/science fiction games, namely, conducting classes, seminars and workshops in the field of games; publishing services, namely, publishing of <specify items published>; publication of texts and books; electronic publishing services, namely, publication of text and graphic works
of others on <indicate format, e.g., CD, DVD, on-line> featuring <indicate specific subject matter>; providing on-line non-downloadable publications in the nature of <specify nature of publication, e.g., magazines, books> in the field of <specify subject matter>; providing on-line publications in the nature of books, art
books, painting guides, novels, novellas, comics, manuals, rule books, newsletters, magazines and journals in the field of <specify subject matter>; providing on-line
publications in the nature of books, art books, painting guides, novels, novellas, comics, manuals, rule books, newsletters, magazines and journals on the subject of fantasy, science fiction, war
games, skirmish games, role playing games, battle games, and fantasy/science fiction games; book club services, namely, organizing chapters of a book reading club and promoting the
interests of the members thereof, arrangement and formation of book clubs, hire of audio and video cassettes, namely, <specify services by common
commercial name>; information services relating to books and printed publications; publication of computer games; providing on-line electronic publications in the nature of
<specify nature of publication, e.g., magazines, books> in the field of <specify subject matter>; advisory services relating to publishing; information, advice and consultation in
relation to all of the aforesaid services; entertainment services in the nature of television programming and motion pictures; production and distribution of motion pictures and television
programming; production of games, and general entertainment programs content, audiovisual programming and games that are streamed, downloaded or otherwise exhibited via a worldwide communications network or on wireless
devices; providing non-downloadable television shows, movies, and multimedia entertainment content, as well as information, reviews, and recommendations regarding television shows, movies, and
multimedia entertainment content; entertainment and educational services, namely, providing non-downloadable movies and television shows via a video-on-demand service, as well as information,
reviews, and recommendations regarding movies and television shows,” in International Class 41.
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.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(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 15 classes; however, applicant submitted a fee(s) sufficient for only 10 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Requirement -- Description of the Mark
The following description is suggested, if accurate:
The mark consists of the term WARHAMMER appearing beneath the depiction of a battle axe. The term is contained within a shaded rectangle. The battle axe design is largely contained within a square with the axe overlapping in the upper-right corner and on the left side.
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
/Michael P. Keating/
Trademark Attorney
Law Office 101
(571) 272-9177
Michael.Keating@uspto.gov (informal inquiries only)
RESPONSE GUIDANCE