To: | Take-Two Interactive Software, Inc. (trademarks@kelleydrye.com) |
Subject: | U.S. Trademark Application Serial No. 88578656 - HANGAR 13 BRNO BRIGHTON 2K PRAGUE - 019321.0043 |
Sent: | November 14, 2019 09:22:05 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88578656
Mark: HANGAR 13 BRNO BRIGHTON 2K PRAGUE
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Correspondence Address:
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Applicant: Take-Two Interactive Software, Inc.
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Reference/Docket No. 019321.0043
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: November 14, 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.
Trademark Act Section 2(d) Search Results – No Conflicting Marks Found
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).
However, the applicant must address the following substantive/procedural issues:
Summary of Issues
Amended Identification of Services Required
The wording “providing online games” in the identification of services is indefinite and must be clarified because applicant has not specified the type of game. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Similarly, the wording “enhancements,” “audio visual content,” and “other multimedia materials” must be clarified to specify the enhancements, audio visual content, and multimedia materials.
The wording “providing a website featuring computer games…” in the identification of services for International Class 041 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass downloadable games in International Class 009, or non-downloadable games in International Class 041.
Applicant may substitute the following wording, if accurate: (bold indicates modified language)
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.
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).
Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 041; and applicant needs a specimen for class 009. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Disclaimer Statement Required
Applicant must disclaim the wording “BRNO BRIGHTON” and “PRAGUE NOVATO” because it is not inherently distinctive. These unregistrable term(s) are at best primarily geographically descriptive of the origin of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).
The attached evidence from Wikipedia shows that these are all generally known geographic places or locations. See TMEP §§1210.02 et seq. The services for which applicant seeks registration originate in this geographic place or location as shown by the attached evidence from applicant’s website. See TMEP §1210.03. Because the goods and/or services originate in this place or location, a public association of the goods and/or services with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BRNO BRIGHTON” and “PRAGUE NOVATO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Amended Mark Description Required
The following description is suggested, if accurate: The mark consists of several circles of varying width, with the word HANGAR on the top part of the outer, widest circle, a lightning bolt on each side of the circle and the terms BRNO BRIGHTON 2K PRAGUE NOVATO in the lower part of the circle, with a center portion consisting of a cat's head with an eye patch and the number 13 above the cat's head. The mark appears on a shaded background.
If applicant does not want to claim the shaded background as a feature of the mark, applicant can submit a new drawing of the mark showing the mark on a white background.
Response Guidelines
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone 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
Bechhofer, Yocheved
/Yocheved Bechhofer/
Examining Attorney
Law Office 114
571-272-9329
Yocheved.Bechhofer@uspto.gov
RESPONSE GUIDANCE