To: | NCSOFT Corporation (gtipmail@gtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88581061 - CRIMINAL EMPIRE - 151960-01230 |
Sent: | November 21, 2019 09:44:59 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88581061
Mark: CRIMINAL EMPIRE
|
|
Correspondence Address: 1840 CENTURY PARK EAST, SUITE 1900
|
|
Applicant: NCSOFT Corporation
|
|
Reference/Docket No. 151960-01230
Correspondence Email Address: |
|
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 21, 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.
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).
The identification for software/computer programs/apps in International Class 009 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Applicant may adopt the following wording, if accurate:
International Class 009: {Specify whether recorded or downloadable} Computer game programs and apps for use on computers, mobile and cellular phones, smart phones, tablet computers, hand-held personal gaming devices, and other electronic and mobile devices; {Specify whether recorded or downloadable} Computer game software for use on computers, mobile and cellular phones, smart phones, tablet computers, hand-held personal gaming devices, and other electronic and mobile devices; Downloadable computer game programs and apps for use on computers, mobile and cellular phones, smart phones, tablet computers, hand-held personal gaming devices, and other electronic and mobile devices; Downloadable computer game software for use on computers, mobile and cellular phones, smart phones, tablet computers, hand-held personal gaming devices, and other electronic and mobile devices; {Specify whether recorded or downloadable} Electronic game programs and apps for use on computers, mobile and cellular phones, smart phones, tablet computers, hand-held personal gaming devices, and other electronic and mobile devices; Downloadable electronic game programs and apps for use on computers, mobile and cellular phones, smart phones, tablet computers, hand-held personal gaming devices, and other electronic and mobile devices; Downloadable software in the nature of a mobile game application; {Specify whether recorded or downloadable} computer applications featuring computer games
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
/R.M. Herrera/
Roselle M. Herrera
Trademark Examining Attorney
Law Office 124
(571) 272-1909
Roselle.Herrera@uspto.gov
RESPONSE GUIDANCE