To: | KABUSHIKI KAISHA SQUARE ENIX HOLDINGS (klim-docket@fzlz.com) |
Subject: | U.S. Trademark Application Serial No. 88687919 - SQUARE ENIX BOOKS - KKSH 1914056 |
Sent: | January 14, 2020 12:40:17 PM |
Sent As: | ecom109@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88687919
Mark: SQUARE ENIX BOOKS
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Correspondence Address: FROSS ZELNICK LEHRMAN & ZISSU, P.C. 151 WEST 42ND STREET, 17TH FLOOR
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Applicant: KABUSHIKI KAISHA SQUARE ENIX HOLDINGS
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Reference/Docket No. KKSH 1914056
Correspondence Email Address: |
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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: January 14, 2020
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.
SUMMARY OF ISSUES
SEARCH RESULTS
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 issues:
IDENTIFICATION OF GOODS AND SERVICES
Class 009
Downloadable computer game software; recorded computer game software; downloadable video game software; recorded video game software; downloadable
virtual reality game software; recorded virtual reality game software; sound recordings in the form of optical discs, magnetic discs and semiconductor ROMs all featuring music and fictional stories;
audio visual recordings in the form of optical discs, magnetic discs and semiconductor ROMs all featuring music and animated fictional stories; prerecorded compact discs featuring music; prerecorded
video discs featuring music and animated fictional stories; mouse pads; straps for cellular phones; downloadable musical sound recordings; downloadable ring tones for mobile phones; downloadable
image files containing artwork, text, graphics and photographs relating to video games, animated characters, card games, computer games, comics, novels, and magazines; downloadable wallpaper graphics
for mobile phones; downloadable electronic publications in the nature of magazines, journals and newsletters in the field of computer games and video games; books recorded on
discs compact discs featuring books about [indicate subject matter, e.g., computer games and video games]; downloadable digital books featuring [indicate subject matter]; downloadable electronic books featuring [indicate subject matter]; pre-recorded digital
audio tape featuring [indicate subject matter]; electronic downloadable publications, namely, [indicate type of publication, e.g., magazines,
newsletters, journals] featuring [indicate subject matter] provided on-line from databases or the Internet.
Class 016
Computer game strategy guidebooks; video game strategy guidebooks; song books; books in the field of art; musical score books; comic books; magazines featuring information about computer games and video games; posters; stickers; calendars; postcards; stationery; collectable trading cards; trading cards, other than for games; photographs; novels; fiction books on a variety of topics; printed publications, namely, [indicate type, e.g., books, magazines, journals, newsletters] featuring [indicate subject matter].
Class 041
Providing amusement facilities; amusement arcades; virtual reality arcade services; providing on-line computer games; providing on-line video games; providing information
on computer game strategies and video game strategies via computer networks and global communication networks; providing information on entertainment in the field of computer games, video games, card
games, animated cartoons, comics, novels and magazines; providing on-line non-downloadable comics; providing on-line non-downloadable magazines, journals and newsletters in the field of computer
games, video games, cartoons and general entertainment; arranging and conducting and organization of concerts and music events for social entertainment purposes; providing on-line non-downloadable
images and pictures in the field computer games, video games and cartoons; providing on-line music, not downloadable; providing on-line non-downloadable audio and video content in the field of
computer games, video games, cartoons and general entertainment; musical entertainment services, namely, providing live performances by musical bands, theater performances by virtual performers on
screen and theatrical performances of a recorded concert; providing information on musical performances and presentation of films; publication and editing of books; book loaning; lending of books and
other publications; electronic [indicate type, e.g., book, magazine] publishing services; on-line publication of electronic books and periodicals; publication of books
and magazines; providing on-line comic books, not downloadable; copy editing of electronic publications; layout services, other than for advertising purposes; rental of printed publications [delete as indefinite and duplicative].
Please note that the wording “providing amusement facilities for virtual reality via global communication networks; providing amusement facilities and play facilities for virtual reality using computer graphics” and “publication of printed matter in electronic form” in applicant’s wording for Class 041 is indefinite and overly broad. Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services. In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording. See TMEP §1402.01(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.
DISCLAIMER
In this case, applicant must disclaim the wording “BOOKS” because it is not inherently distinctive. This unregistrable term is at best merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). Specifically, the identification of goods and services shows that the goods and services consist of books. As such, the word “BOOKS” in the mark refers immediately to the class name and genus of the goods and services. It is therefore generic, has no trademark significance and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BOOKS” 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.
FILING BASIS – FOREIGN REGISTRATION CERTIFICATE
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/Susan Stiglitz/
Trademark Examining Attorney
USPTO, Law Office 109
susan.stiglitz@uspto.gov
571-272-9285
RESPONSE GUIDANCE