Offc Action Outgoing

NIGHTINGALE

Improbable Worlds Limited

U.S. Trademark Application Serial No. 88925545 - NIGHTINGALE - 13367.247US0

To: Improbable Worlds Limited (dockmpls@merchantgould.com)
Subject: U.S. Trademark Application Serial No. 88925545 - NIGHTINGALE - 13367.247US0
Sent: August 25, 2020 01:32:37 PM
Sent As: ecom103@uspto.gov
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4

United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 88925545

 

Mark:  NIGHTINGALE

 

 

 

 

Correspondence Address: 

DANIELLE I. MATTESSICH

MERCHANT & GOULD P.C.

P.O. BOX 2910

MINNEAPOLIS, MN 55402-0910

 

 

 

Applicant:  Improbable Worlds Limited

 

 

 

Reference/Docket No. 13367.247US0

 

Correspondence Email Address: 

 dockmpls@merchantgould.com

 

 

 

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:  August 25, 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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

EARLIER-FILED APPLICATIONS MAY BE A BAR TO REGSTRATION

 

The filing dates of pending U.S. Application Serial Nos. 88770765 and 88770039 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF SERVICES FOR CLASS 38 MUST BE AMENDED

 

The wording “Providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information” in class 38 must be amended to change “multiple use” to “multiple user.”

 

The wording “delivery of electronic, computer and video action-based games by telecommunication” in the identification of services is indefinite and must be clarified because it does not sufficiently indicate the specific delivery services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  

 

CLASS 41: providing online non-downloadable electronic, computer and video action-based games

 

The wording “providing access to on-line publications and information, in particular relating to software and computer action-based games” is indefinite and too broad and must be clarified because it suggests both the services of providing Internet access and providing Internet content and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03, 1402.11(a)(ii)-(iii).  

 

Providing multiple-user access to the Internet is a service provided by Internet Service Providers (“ISPs”) who supply the computer connection that enables computer users to access the Internet and all its data and content.  See TMEP §1402.11(a)(iii).  If applicant is an ISP, applicant must amend the identification to specify these services and to classify them in International Class 38.  See id.  The following format is suggested, if appropriate:  “Internet service provider (ISP),” in International Class 38.

 

If applicant is providing information via the Internet, such as on a website, the subject matter of the information being provided determines classification of these services.  See TMEP §1402.01(a)(ii).  Therefore, these services would be classified in International Classes 41 and 42 because the content specified by applicant would be classified in these classes.  In addition, the identification should not include the word “access” because this word is suggestive of services in International Class 38, as described above.  See TMEP §1402.11(a)(ii)-(iii).

 

Applicant may adopt the following identification in International Classes 41 and/or 42, if accurate:  

 

CLASS 41: Providing information in the field of computer action-based games via the Internet; providing online non-downloadable publications in the nature of magazines in the field of computer action-based games.

 

CLASS 42: providing information in the field of software development

 

IDENTIFICATION OF SERVICES FOR CLASS 41 MUST BE AMENDED

 

The wording “Virtual reality media services in the field of entertainment provided on-line from a computer network” in the identification of services is indefinite and must be clarified because it does not indicate the specific virtual reality media services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:

 

Virtual reality media services in the field of entertainment provided on-line from a computer network, namely, providing online virtual reality computer games.

 

The wording “Educational services, namely, conducting seminars and conferences for promotional purposes in the field of entertainment” because it is not clear whether the conferences are business conferences in class 35 or educational conferences in class 41.  Applicant may adopt the following wording, if accurate:

 

CLASS 35: Conducting business conferences for promotional purposes in the field of entertainment

 

CLASS 41: Educational services, namely, conducting seminars and conferences in the field of entertainment

 

The wording “Entertainment in the nature of online, action-based tournaments” must be amended because it does not sufficiently indicate the specific type of tournaments.  Applicant may adopt the following wording, if accurate:

 

Entertainment in the nature of online, action-based computer game tournaments

 

The wording “providing action-based computer games and action-based video games for entertainment purposes; action-based video game entertainment services” must be amended because it does not indicate how the games are provided.  Applicant may adopt the following wording, if accurate:

 

Providing online action-based computer games and action-based video games for entertainment purposes; action-based video game entertainment services, namely, providing online action-based video games

 

IDENTIFICATION OF SERVICES FOR CLASS 42 MUST BE AMENDED

 

The wording “Writing, designing, developing and producing computer software and hardware, computer programs and action-based computer games” must be amended because the meaning of writing and producing computer hardware is not clear.  Applicant may adopt the following wording, if accurate:

 

Writing, designing, developing and producing computer software, computer programs and action-based computer games; Design and development of computer hardware.

 

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

 

REQUIREMENTS FOR A MULTIPLE CLASS APPLICATION

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED WHEN AVAILABLE

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

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

 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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.  

 

 

 

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U.S. Trademark Application Serial No. 88925545 - NIGHTINGALE - 13367.247US0

To: Improbable Worlds Limited (dockmpls@merchantgould.com)
Subject: U.S. Trademark Application Serial No. 88925545 - NIGHTINGALE - 13367.247US0
Sent: August 25, 2020 01:32:38 PM
Sent As: ecom103@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 25, 2020 for

U.S. Trademark Application Serial No. 88925545

 

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. 

 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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 August 25, 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.”

 

 

 


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