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:  March 25, 2021

 

 Non-Final Action

This Office action is in response to applicant’s communication filed on March 3, 2021, in which Applicant amended the identification of goods and services, and submitted a copy of the foreign registration.

 

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Upon further consideration, the refusal under Trademark Act Section 2(e)(1) is withdrawn.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.

 

Particular wording in the U.S. application’s identification of goods and/or services is not acceptable because it exceeds the scope of the goods and/or services in the foreign registration.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Trademark Act Section 44, an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

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

• 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 March 25, 2021 for

U.S. Trademark Application Serial No. 88819109

 

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. 

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

571-272-9284

nelson.snyder@uspto.gov (Informal comms only

 

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 March 25, 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.”