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 08, 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:

• Identification Indefinite – Amendment Required
• Clarification of the Number of Classes for Which Registration is Sought Required

 

SEARCH OF OFFICE’S DATABASE OF 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).

 

IDENTIFICATION INDEFINITE – AMENDMENT REQUIRED

 

The identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification is indefinite and some goods and services are misclassified. The Examining Attorney has made suggestions below.

 

Applicant may adopt the following identification, if accurate:

 

Class 09 - Downloadable video game software; recorded video game software; optical discs featuring video games, and video game-related content; (applicant to specify, e.g., downloadable, etc.) computer programs for use in tracking the status of various users of online interactive gaming services and for matching online game players with other players of all skill levels; Multi-player interactive online video game programs; downloadable interactive game software; downloadable computer game software; downloadable game software; downloadable electronic game software for wireless devices; recorded interactive game software; recorded computer game software; recorded game software; recorded electronic game software for wireless devices; computer game software downloadable from a global computer network; downloadable computer game software for use on mobile and cellular phones; downloadable virtual reality software for playing games and interactive entertainment; recorded virtual reality software for playing games and interactive entertainment; downloadable augmented reality software for playing games and interactive entertainment; recorded augmented reality software for playing games and interactive entertainment; downloadable games that accept virtual or monetary wagers sold as a feature of downloadable game software; downloadable computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals; headphones; computer mouse; mouse pad; cell phone cover; stands for handheld digital electronic devices, namely, cell phones; carrying cases for cell phones; protective covers and cases for cell phones, laptops and portable media players

 

Class 16 - Calendars; catalogs in the field of computer and video games; collectible trading cards; coloring books; paper goods, namely, comic books; computer manuals for playing computer and video games; greeting cards; guide books featuring strategy for playing computer games for entertainment; manuals in the field of playing computer and video games in the form of instructional leaflets; role playing game equipment in the nature of game book manuals; notebooks; printed photographs; pictures; posters; printed advertising boards of cardboard; printed advertising boards of paper; removable adhesive stickers; stationery-type portfolios; adhesive stickers and rub-on transfers; trading cards, other than for games; children's books; paper Halloween decorations; paper party bags; paper lunch bags; paper party decorations; paper place mats; paper table cloths; party favor gift boxes sold empty; party ornaments of paper; picture books; story books; blank journals

 

Class 18 - Backpacks; carry-all bags; all-purpose carrying bags; sack packs, namely, drawstring bags used as backpacks; ruck sacks; knap sacks; traveling bags; sports bags; school bags; hand bags; gym bags; athletic bags; book bags; messenger bags; tote bags; carry sack in the nature of drawstring bags used as backpacks; courier bags, duffle bags, waist bags, wallets, calling card cases, credit card cases and holders, carrying cases, name card cases, business card cases

 

Class 20 - Figurines of vinyl; figurines of plastic; plastic banners; vinyl banners

 

Class 21 - Lunch kits composed of a lunch box fitted with a cup and plate; lunch boxes, lunch pails; lunch bags not of paper; mugs, drinking glasses, cups and water bottles sold empty; beverage glassware; bowls; dishes; mugs; place mats of plastic; plates; vinyl place mats

 

Class 24 - figurines of plastic; plastic banners; vinyl banners

 

Class 25 - Clothing, namely, T-shirts, jerseys, hats, pants, shorts, sweatshirts, sweaters, jackets, gloves, scarves, shirts, polo shirts, button down shirts, golf shirts, tank tops, wristbands, ties, underwear, hooded pullovers, hooded sweatshirts, pajamas; sports jerseys; sandals; costumes for use in role-playing games; Halloween costumes; Halloween costumes and masks sold in connection therewith; socks; belts; beanies; coats; leggings; lounge pants; loungewear; nightgowns; robes; scarves; shorts; skirts; sports jackets; sports jerseys; sports pants; sports shirts; swimwear; tops as clothing; training suits; trousers; warm up outfits

 

Class 28 - Toys, namely, toy action figures and accessories therefor, mechanical action toys, toy vehicles and bendable toy figurines, role-playing games, role-playing toys, namely, (applicant to specify, e.g., in the nature of play sets for children to imitate real life occupations, etc.), board games, card games, collectible toy figures, fantasy character toys, positionable toy figures, talking toys, toy weapons; stuffed and plush toys; replica and collectible weapons, armor, equipment, and figurines related to action and fantasy games; props, namely, (applicant to specify type of props); trading cards for games; gaming mice; stand alone video game machines; playing card cases; playing cards; playing cards and card games; Christmas tree ornaments; bobble head dolls; collectable toy figures; Halloween masks; modeled plastic toy figurines; play figures; toys, namely, children's dress-up accessories; balloons; board games; hand-held party poppers; paper party favors; paper party hats; piñatas; play sets for action figures; puzzles; role playing games; toy guns; toy water guns

 

Class 38 - Providing on-line chat rooms and interactive discussion forums for gamers and computer game players

 

Class 41  Entertainment services, namely, providing online video games for others over global and local area computer networks; providing a content management system in the nature of a (applicant to specify, e.g., website, etc.) enabling players to view statistical information on the performance of other players in the field of (applicant to clarify what is meant by media and entertainment) for communities of people that play online games; providing interactive online computer games via the World Wide Web; providing information about online computer games and video games via the World Wide Web; providing multi player interactive games over the World Wide Web; providing tracking of users of online interactive gaming services and matching online game players with other players of all skill levels; providing a website featuring on-line product trivia, tips and strategies for computer games; fan club services; providing a website featuring non-downloadable game software; providing temporary use of non-downloadable game software; multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; production of video and computer game software; virtual reality and augmented reality game services provided online from a computer network; arranging and conducting competitions for video gamers and computer game players; arranging online computer and video game competitions for interactive game players; providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of video gaming; arranging and conducting live, interactive gaming tournaments featuring video games; entertainment services, namely, organizing live social entertainment events in the nature of fan meetings and conferences in which there is interactive gameplay between conference participants in the fields of video games and e-sports; organizing live video game and e-sports competitions; Entertainment services, namely, providing Multi-player interactive online video game programs;

 

Class 42 - Design and development of computer game software, virtual reality software and augmented reality software; computer programming services for creating virtual reality and augmented reality videos and games; video game development services; developing customized web pages featuring user-defined computer game information; Providing customized on-line web pages and data feeds, featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites, and which excludes social networking services

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED

 

The application identifies goods and/or services that are classified in possibly ELEVEN classes; however, applicant submitted a fee(s) sufficient for only ONE class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 fee(s) already paid (view the USPTO’s current fee schedule).

 

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 regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS).  See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).

 

TEAS PLUS AND TEAS RF ADVISORY

 

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.  

 

RESPONDING TO THIS OFFICE ACTION

 

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. 

 

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

 

 

/Schmidt, John/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7082

john.schmidt@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 08, 2019 for

U.S. Trademark Application Serial No. 88524680

 

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. 

 

 

/Schmidt, John/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7082

john.schmidt@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 08, 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.”