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:  June 12, 2020

 

 

INTRODUCTION

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.

 

SUMMARY OF ISSUES:

• Amendment Required – Identification of Goods

 

AMENDMENT REQUIRED – IDENTIFICATION OF GOODS

Software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software.  For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.

 

Applicant must clarify the wording “interactive multi-media software for playing games” in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear whether the goods are downloadable.  Further, this wording could identify goods and/or services in more than one international class.  For example, “Downloadable interactive multi-media software for playing games” is in International Class 009 and “Providing online non-downloadable interactive multi-media software for playing games” is in International Class 041. 

 

Applicant must clarify the wording “computer game software for wireless and electronic mobile devices, mobile phones and hand-held electronic devices” in the identification of goods because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear whether the goods are downloadable.  Further, this wording could identify goods and/or services in more than one international class.  For example, “Downloadable computer game software for wireless and electronic mobile devices, mobile phones and hand-held electronic devices” is in International Class 009 and “Providing online non-downloadable computer game software for wireless and electronic mobile devices, mobile phones and hand-held electronic devices” is in International Class 041. 

 

In addition, applicant must clarify the wording “wireless communication devices and systems for computer software for the transmission of audio, voice and images”, because the use of the word “for” twice makes it unclear that the goods are a type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, the applicant must clarify whether the software is downloadable.

 

Applicant may substitute the following wording, if accurate (proposed amendments in bolded italics):

 

International Class 009: Prerecorded video discs and DVDs featuring motion pictures, television series or other short form entertainment programs in the nature of comedy, drama, news, reality and variety content; prerecorded optical and magneto-optical discs featuring music, motion pictures, television programs or other short form entertainment programs in the nature of comedy, drama, news, reality and variety content; prerecorded CDs featuring music and motion picture sound tracks; downloadable music, films and television series; downloadable shows featuring television and short form programs and motion pictures in the nature of comedy, drama, news, reality and variety content; downloadable interactive multi-media software for playing games; downloadable software in the nature of a mobile application for playing games and accessing entertainment content for use with computers, portable handheld digital electronic communication devices, mobile devices and wired and wireless communication devices; downloadable computer game software for wireless and electronic mobile devices, mobile phones and hand-held electronic devices; computer game discs; video game discs; eyewear, eyeglasses, sunglasses and cases therefor; decorative magnets; cinematographic machines and apparatus; wireless communication devices and systems for downloadable computer software for the transmission of audio, voice and images; downloadable animated cartoons; electronic publications, downloadable, namely, magazines and books in the field of entertainment

 

International Class 041: Providing online non-downloadable interactive multi-media software for playing games; Providing online non-downloadable computer game software for wireless and electronic mobile devices, mobile phones and hand-held electronic devices; Providing online non-downloadable computer software for the transmission of audio, voice and images

 

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.

 

Multiple-class Application Requirements

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 Section 1(b):

 

(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

RESPONSE GUIDELINES

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

Shinn, Lauren

/Lauren D. Shinn/

Trademark Examining Attorney

Law Office 128

(571) 270-5230

Lauren.Shinn@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.  

 

• 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 June 12, 2020 for

U.S. Trademark Application Serial No. 88926019

 

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. 

 

 

Shinn, Lauren

/Lauren D. Shinn/

Trademark Examining Attorney

Law Office 128

(571) 270-5230

Lauren.Shinn@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 June 12, 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.”