To: | Kalypso Media Group GmbH (tmdocket@leasonellis.com) |
Subject: | U.S. Trademark Application Serial No. 88819109 - MATCHPOINT - 10859/ |
Sent: | March 25, 2021 04:32:16 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88819109
Mark: MATCHPOINT
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Correspondence Address: ONE BARKER AVENUE, FIFTH FLOOR
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Applicant: Kalypso Media Group GmbH
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Reference/Docket No. 10859/
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: March 25, 2021
The foreign registration copy and amended identification of goods and services are acceptable, and have been entered in the record.
Upon further consideration, the refusal under Trademark Act Section 2(e)(1) is withdrawn.
Identification Exceeds Scope of Foreign Registration – New Issue
THIS PARTIAL REQUIREMENT APPLIES TO CLASSES 009 and 041 ONLY.
In this case, the U.S. application identifies the International Class 009 and 041 goods and services as follows:
“Downloadable and recorded computer sports game software, downloadable and recorded video sports game software; Downloadable electronic sports game programs; Electronic and machine-readable blank magnetic data carriers” [in International Class 009]
“Providing of online computer sports games; providing non-downloadable electronic publications in the nature of newsletters in the field of computer sports games; Electronic sports games services provided by means of the Internet; Providing information on-line relating to computer sports games and computer enhancements for sports games; Publication of printed matter, texts and online newsletters and manuals; Production of animation, audio recordings, music and video recordings; Providing of non-downloadable pre-recorded digital music and online videos in the field of sports games, all provided via the internet” [in International Class 041].
However, the foreign registration includes the following limiting language not present in the U.S. application:
“all aforesaid goods only in relation to computer games, video games and mobile games in the nature of tennis games”
“all aforesaid services only in relation to computer games, video games and mobile games in the nature of tennis games”.
Accordingly, the International Class 009 and 041 goods and services in the U.S. application exceed the scope of the goods and/or services in the foreign registration without such limiting language.
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, ensuring that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
NOTE: If Applicant selects Option (1) above, the following identification of goods and services is suggested, if accurate. [Suggested changes are noted in bold type and/or are underlined.]
“Downloadable and recorded computer sports game software, downloadable and recorded video sports game software; Downloadable electronic sports game programs; Electronic and machine-readable blank magnetic data carriers; all aforesaid goods only in relation to computer sports games, video sports games and mobile sports games in the nature of tennis games” [in International Class 009]
“Sports Games, in the nature of arcade game machines for amusement arcades, arcade-type electronic video sports games and coin-operated video sports games” [in International Class 028]
“Providing of online computer sports games; providing non-downloadable electronic publications in the nature of newsletters in the field of computer sports games; Electronic sports games services provided by means of the Internet; Providing information on-line relating to computer sports games and computer enhancements for sports games; Publication of printed matter, texts and online newsletters and manuals; Production of animation, audio recordings, music and video recordings; Providing of non-downloadable pre-recorded digital music and online videos in the field of sports games, all provided via the internet; all aforesaid services only in relation to computer sports games, video sports games and mobile sports games in the nature of tennis games” [in International Class 041].
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
Failure to Respond – Abandonment of Specified Classes
If applicant does not respond to this Office action within the six-month period for response, International Classes 009 and 041 will be deleted from the application. The application will then proceed with International Class 028 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
How to respond. Click to file a response to this nonfinal Office action.
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
571-272-9284
nelson.snyder@uspto.gov (Informal comms only)
RESPONSE GUIDANCE