To: | MSCHF PRODUCT STUDIO, INC (stephen@smcarthurlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88719395 - MSCHF - N/A |
Sent: | January 21, 2021 01:28:27 PM |
Sent As: | ecom119@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. 88719395
Mark: MSCHF
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Correspondence Address:
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Applicant: MSCHF PRODUCT STUDIO, INC
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Reference/Docket No. N/A
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 21, 2021
Applicant’s attorney failed to respond to repeated communications by email thus requiring this Office Action.
This Office action is in response to applicant’s communication filed on December 17, 2020.
On December 17, 2020, a final Office Action on this application issued raising the following refusals and requirements: 1) refusal on grounds the specimens in both Classes failed to show the purported services; and 2) the identification of services remained unacceptable.
Applicant’s response is acceptable with regard to all previously raised requirements. The following new issue is raised.
IDENTIFICATION OF SERVICES IN CLASS 35
The wording “online store featuring non-downloadable software for playing games” is indefinite. Applicant did not adopt the wording previously suggested for “online store featuring humorous downloadable software and recorded non-downloadable software for playing games”
Second, the software being sold must be a good, not a service. The office considers “non-downloadable software” as a service in Class 41 because no recorded format is specified. Applicant does not show a specimen of use in Class 41. Furthermore a ‘store’ selling “non-downloadable” game software that his housed in the cloud for play online renders the wording and the nature of the ‘store’ ambiguous and unclassifiable. Hence the recorded format must be specified.
See in the Manual:
035 On-line wholesale and retail store services featuring downloadable sound, music, image, video and game files
041 Providing a website featuring non-downloadable game software
Therefore, applicant must amend the identification and indicate with greater specificity the nature of the service in International Class 35; applicant may adopt: “online retail store featuring downloadable software and software in recorded media formats each for playing games” in Class 35.
(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).
(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(es) 35; and applicant needs a specimen for class(es) 41. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Hanno Rittner/
Examining Attorney
Law Office 119
hanno.rittner@uspto.gov
571-272-7188
RESPONSE GUIDANCE