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
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Correspondence Address:
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Applicant: Improbable Worlds Limited
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Reference/Docket No. 13367.247US0
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: 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
EARLIER-FILED APPLICATIONS MAY BE A BAR TO REGSTRATION
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
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.
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
(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
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