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:  April 02, 2021

 

This Office action is in response to applicant’s communication filed on March 30, 2021.

 

On January 21, 2021, a non-final Office Action on this application issued raising a new identification of goods issue, finding “online store featuring non-downloadable software for playing games” is indefinite.

 

Applicant’s response acceptably deleted the objectionable language and amended “online retail stores selling shoes, rubber chickens, and pipes” -- previously acceptable wording -- to add new matter, thus raising the following new issue.

 

AMENDMENT EXCEEDS SCOPE OF PREVIOUS ACCEPTABLE RECITATION

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended previously by applicant on September 12, 2020, as required pursuant to the Office action of March 12, 2020.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application, as amended, identifies the services as follows:  “online retail stores selling shoes, rubber chickens, and pipes;”

 

However, the proposed amendment identifies the following services:  “online retail stores selling shoes, rubber chickens, games, and pipes.”   “Games” in the proposed amendment exceeds the scope of the current identification because “games” was not listed in the previous amendment and is not within the scope of any previously remaining unacceptable identification, i.e., “online store featuring non-downloadable software for playing games” which was preceded by the proposed identification “online store featuring humorous downloadable software and non-downloadable software.”  None of the proposals feature anything other than “software” for games and thus must be limited to “downloadable” software for playing games for the reasons previously made clear in the prior Office action directed to the indefinite identification.

 

The applicant may respond by

1)     deleting “games”

2)     argue the acceptability of its proposed amendment, or

3)     amend to “online retail stores selling shoes, rubber chickens, humorous downloadable software for playing games, and pipes” in lieu of its most recent proposed amendment.

 

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

• 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 April 02, 2021 for

U.S. Trademark Application Serial No. 88719395

 

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. 

 

 

  

/Hanno Rittner/

Examining Attorney

Law Office 119

hanno.rittner@uspto.gov

571-272-7188

 

 

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 April 02, 2021, 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.”