Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  December 22, 2020

 

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Application suspended until submission of foreign registration or proof that foreign registration was renewed.  Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed.  TMEP §§716.02(b), 1003.04.  Applicant must also provide an English translation if the foreign registration or renewal document is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

Refusal(s) and/or requirement(s) resolved.  The following refusal(s) and/or requirement(s) is/are satisfied/obviated: 

 

            •  Section 2(d) Refusal

            •  Requirement for Additional Information

 

See TMEP §713.02.

 

Refusal(s) and/or requirement(s) maintained and continued

The following refusal(s) and/or requirement(s) is/are maintained and continued: 

 

            •  Section 2(e)(1) Refusal

            •  Identification and Classification of Goods and Services – Clarification Required

            •  Combined Application Requirements

 

See id.  These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Section 2(e)(1) Refusal Continued

While Applicant has provided additional information about the goods and services, the identified goods and services remain broadly worded so as to encompass electronic/video games and related subject matter concerning a particular card game.

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Accordingly, the refusal under Trademark Act Section 2(e)(1) is CONTINUED.

 

Identification and Classification of Goods/Services – Requirements Continued

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

While the majority of the proposed amendment is acceptable, the following wording remains unacceptably indefinite and/or overly broad:

 

“Games, in the nature of games for amusement arcades, electronic video games”

 

“Providing of non-downloadable pre-recorded online videos”.

 

Accordingly, the requirements for an acceptable identification of goods and services, and proper classification of the same, are CONTINUED.

 

Applicant may amend the identification and classification to the following, if accurate.  [Changes are noted in bold type and/or are underlined.]

 

“Downloadable and recorded computer game software, downloadable and recorded video game software; Downloadable electronic game programs; Electronic and machine- readable blank magnetic data carriers” [in International Class 009]

 

“Games, in the nature of arcade game machines for amusement arcades, arcade-type electronic video games and coin-operated video games” [in International Class 028]

 

“Providing of online computer games; providing non-downloadable electronic publications in the nature of newsletters in the field of computer games; Electronic games services provided by means of the Internet; Providing information on-line relating to computer games and computer enhancements for 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 {indicate field or subject matter of videos}, all provided via the internet” [in International Class 041].

 

TMEP §§1402.01 and 1402.03.  [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]

 

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.

 

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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

571-272-9284

nelson.snyder@uspto.gov (Informal comms only)

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 22, 2020 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.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(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).

 

 

 

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.”