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 22, 2020

 

 

 

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.

 

SUMMARY OF ISSUES:

 

• Disclaimer Required
• Definite Identification and Classification of Goods and Services Required
• Multiple Class Application Requirements

 

SEARCH OF USPTO 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).

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “FIGURE” because it is merely descriptive of a feature 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). 

 

This wording appears in applicant’s identification of goods, namely, the goods include a variety of toy figures including toy figurines and action figures.  Thus, the wording merely describes applicant’s goods as the goods are, or feature, figures.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “FIGURE” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

DEFINITE IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIRED

 

The listed entries in the identification are indefinite or overbroad, and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

• toys, namely, small shapes and figurines that emit visible light

-          applicant must clarify the nature of the goods identified as “small shapes”

 

• articles battery operated action toys that emit visible light

-          the wording “articles” is unclear; applicant must clarify the nature of the articles, or delete this wording

 

• toy figures in a video game that appear to emit light

-          the nature of the goods and/or services is unclear as to objects appearing “in a video game.”  Applicant must clarify whether the toy figures are physical toys used for playing videos, or further specify the nature or form of the goods and/or services if the figures are electronic data or images and reclassify as required below.

 

• electronic novelty toys, namely, toys that electronically record, play back, and emit visible light

-          the nature of the illuminated electronic toys must be further clarified, as the recording, “play back” and emission of visible light is not associated with a general field or type of novelty toy.

 

• flying toys that emit visible light

-          the general nature of the flying toys must be specified, as the goods could encompass both hand-powered mechanical toys as well as toy vehicles and levitation toys

 

• three dimensional toys for use in games that emit visible light

-          the general nature of the toys must be specified

 

• illuminated robots

-          the identification is overbroad, and could identify goods in multiple classes.  Robots are classified according to function or purpose, for example toy robots are in Class 028, industrial robots are in Class 007, and laboratory robots are in Class 009.  Applicant must specify the nature of the robots, and classify accordingly.

 

• illuminated blocks

-          the identification is overbroad, and could identify goods in multiple classes.  Applicant must specify the nature or type of blocks for which it seeks registration, and classify accordingly.

 

• video games

-          the identification is overbroad, and could identify goods or services in multiple classes.  Video game apparatus, such as video game cartridges and video game consoles, are in Class 028, recorded and downloadable video game software is in Class 009, and services for providing online video games are in Class 041.  Applicant must clarify the nature of “video games” for which it seeks registration, and amend the classification as necessary.

 

• animated books

-          the identification is indefinite and overbroad.  Applicant must specify the subject matter of the books (e.g., children’s books), and the form of the “animated” book; if the books are downloadable or recorded on computer media, the goods are classified in Class 009; if the books are non-downloadable publications, the provision of same are services in Class 041.  Applicant should review the multiclass application requirements set forth below.

 

• cartoons

-          the identification is indefinite and overbroad.  Applicant must specify the form of the cartoons, and classify accordingly (downloadable or recorded goods are in Class 009, non-downloadable videos are services in Class 041).  Applicant should review the multiclass application requirements set forth below.

 

• trading cards

-          the identification is indefinite and overbroad.  Trading cards for games are classified in Class 028; trading cards, other than for games (e.g., collectible trading cards, sports trading cards), are classified in Class 016.  Applicant must specify the type of trading cards for which it seeks registration and amend the classification as necessary.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 009:          downloadable video game software; animated books, namely, downloadable multimedia publications in the nature of animated children’s books; pre-recorded DVDs and downloadable video recordings featuring cartoons

 

International Class 016:          collectible trading cards

 

International Class 028:          Toys, namely, small shapes in the nature of building bricks and figurines that emit visible light; Toys, namely, construction interlocking bricks that emit visible light; Educational toys, namely, blocks that connect to a power source and emit visible light; Action figure toys that emit visible light; Articles Battery operated action toys that emit visible light; Toy figures for use in playing video games that appear to emit light; Construction toys incorporating light emitting diodes; Electric action toys that emit visible light; Electronic novelty toys in the nature of {clarify general type of light up toy, e.g., toy light sticks}, namely, toys that electronically record, play back, and emit visible light; Fantasy character toys that emit visible light; Flying toys in the nature of disks, balls and saucers that emit visible light; Flying disk that emits visible light; positionable three dimensional toys for use in games that emit visible light; action figures; illuminated action figures; illuminated toy robots; illuminated toy blocks; illuminated dolls; board games; video game cartridges; puzzles; trading cards for games

 

International Class 041:          entertainment services, namely, providing online video games; providing online multimedia publications in the nature of animated children’s books; providing on-line, nondownloadable videos featuring cartoons

 

See TMEP §1402.01, 1402.03.

Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of goods.  The braces should not appear in the amended identification; only the specific goods indicated, as inserted by applicant.  Applicant need not amend its identification other than where specified.

If applicant adopts the suggested amendment of the identification of goods and/or services shown in classes 009, 016 and/or 041, then applicant must amend to the classification shown for those amendments.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  Please see below for a discussion of multiple-class application requirements.

 

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 and as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that may be classified in at least four classes; however, applicant submitted fees sufficient for only one class.  In a multiple-class application, a fee for each class is required.  Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). 

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@uspto.gov

 

 

 

 

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 22, 2020 for

U.S. Trademark Application Serial No. 88801776

 

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. 

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@uspto.gov

 

 

 

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 22, 2020, 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.”