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:  September 03, 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.

 

SUMMARY OF ISSUES:

 

• Identification of Goods and Services
• Application Exceeds Scope of Foreign Registrations
• Certified Copy of Foreign Registrations Required

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must address issues with the following wording:

 

·         The wording “brooches” is overbroad as brooches for clothing fall into class 26 while brooches being jewelry fall into class 14.

·         The wording “bags” is vague.  Applicant must identify the types of bags by their common commercial name, e.g., gym bags, sports bags, textile shopping bags, etc.

·         The wording “cosmetic bags” is overbroad.  Only cosmetic bags sold empty fall into class 18.

·         The wording “shoulder belts” in class 18 is unacceptable because it may identify clothing items which fall into class 25 or leather shoulder belts which are traditionally used for carrying items in class 18.  Applicant may adopt “leather shoulder belts” if accurate.

·         The wording “headgear, namely, hats and caps” is unacceptable because specific types of caps fall into more than one International Class.  Applicant must further identify the nature of the caps, e.g., “headwear”.

·         The wording “costumes” is vague.  Applicant must identify the specific types of costumes, e.g., Halloween costumes, masquerade costumes, swimming costumes, etc.

·         The wording “computer game services provided remotely by means of the internet” is vague.  Applicant must identify the nature of the services, e.g., providing an on-line computer game.

·         The wording “publishing of computer game publications, namely, books featuring computer games and computer game software” is unclear.  Books do not generally feature computer games or computer game software.  Moreover the publication of applicant’s own computer games is not a registrable service.  Publication services are registrable only when they are offered to third parties. Therefore applicant must clarify the nature of the publication services and their content.

·         The wording “television entertainment, namely, provision of graphic, visual and literary content for feature films, TV films and TV series including the creation of story lines and character development” is vague and overbroad.  In addition it is unclear what the difference between “feature films” and “tv films” is.  The preceding language limits the “feature films” to television entertainment.  Applicant must clarify this wording so that it is consistent with “television entertainment” or remove it.  In addition the design of graphics and visual content as a service is generally considered a class 42 service, unless it specifically performed as a part of television production services.  Applicant may adopt “Television production services, namely, screenplay writing, development of characters for television screenplays, and production of visual special effects for TV films and TV series”.

·         The wording “information and advisory services in the field of computer game entertainment and publishing” in class 41 is unacceptable as some advisory services, such as business advisory services and consumer product advisory services fall into class 35.  Applicant may adopt “information in the field of computer game entertainment and publishing”, if accurate.

 

Applicant may adopt the following identification, if accurate: 

 

Class 14: (Based on 44(e)) (Based on Intent to Use) Jewelry; key chains; jewelry chains; pendants; watches; brooches being jewelry; lapel pins

 

Class 18: (Based on 44(e)) (Based on Intent to Use) Luggage; gym bags; cosmetic bags sold empty; wallets; purses; messenger bags; fanny packs; key cases; leather shoulder belts; umbrellas

 

Class 25: (Based on 44(e)) (Based on Intent to Use) Clothing, namely, trousers, t-shirts, sweatshirts, jumpers, polo-shirts, casual and leisure jackets, shirts, shorts, socks, underwear, swimwear, nightwear; headwear, namely, hats and caps; Halloween costumes; belts; (Based on Intent to Use) shoes and boots

 

Class 41: (Based on 44(e)) (Based on Intent to Use) Entertainment services, namely, providing on-line computer games and providing on-line non-downloadable computer game software; computer game services provided remotely by means of the internet; (Based on Intent to Use) Entertainment services, namely, production and direction of feature films, TV films and TV series; production of video gaming related multimedia programs and distribution by means of television broadcasting and via the Internet; publishing of computer game publications for others, namely, books in the field of computer games and computer game software; music publishing; film production, other than advertising films; Television production services, namely, screenplay writing, development of characters for television screenplays, and production of visual special effects for TV films and TV series; information in the field of computer game entertainment and publishing

 

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.

 

APPLICATION EXCEEDS SCOPE OF FOREIGN REGISTRATIONS

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), 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 for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods under Section 44(e): 

 

Class 14: Keychains

 

Class 18: Wallets

 

However, the foreign registrations identify the following goods in classes 14 and 18:

 

Class 14: Jewellery; costume jewellery; watches.

 

Class 18: Luggage; trunks and travelling bags; handbags, rucksacks, satchels, purses; key cases, belts; goods of leather and imitation leather; umbrellas, parasols and walking sticks; baby carriers; changing bags; bags; holdalls; rucksacks; cosmetic bags.

 

These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because wallets and keychains are not included in the foreign registration.  Thus, these goods and/or services in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)               Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)               Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.   

 

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, 806.04, 1402.01(b).

 

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.

 

CERTIFIED COPY OF FOREIGN REGISTRATIONS REQUIRED

 

Applicant submitted a printouts from an intellectual property office’s website to satisfy the statutory requirement under Trademark Act Section 44(e) for a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.  However, the submitted documents were not accompanied by a certification from the issuing intellectual property office.  A photocopy of an intellectual property office’s publication or a printout from an intellectual property office’s website is sufficient to satisfy the statutory requirement only if it is accompanied by a certification from the issuing office.  TMEP §1004.01. 

 

An acceptable “copy” is a document that has been issued to 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 certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.

 

Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.  If the foreign certificate of registration is not written in English, applicant must also provide an English translation.  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).

 

RESPONSE GUIDELINES

 

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

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 September 03, 2020 for

U.S. Trademark Application Serial No. 88937682

 

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. 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 September 03, 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.”