Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 22, 2021

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 18, 2021.

 

In a previous Office action dated September 3, 2020, the trademark examining attorney required applicant to amend the identification of goods and services and to submit a certified copy of the foreign registration forming the basis of the application.  In addition applicant was advised that certain wording in the application appeared to exceed to scope of the foreign registration.

 

Based on applicant’s response, the trademark examining attorney notes that foreign registration and scope issues are resolved.  See TMEP §§713.02, 714.04. 

 

However certain wording in the identification of goods and services remains unacceptable.  Therefore the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification of Goods and Services

 

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 “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.  While this wording was previously accepted, “game services” and “computer game services” are no longer acceptable identifications.  Identification of goods/services must conform to the rules and policies in effect at the time registration is sought. This change is actually consistent with the most recent registration that applicant provided for MY FRIEND PEDRO which reads “computer game services provided remotely by means of the internet, namely, providing online computer games;”
• While the wording “publishing of computer game publications, namely, books featuring computer games and computer game software” has also been previously accepted, it is unclear what “books featuring computer games and compute game software” are and applicant has chosen not to explain how books can feature computer games and computer game software.  If applicant can explain the meaning of this wording perhaps it may be acceptable but currently is must be clarified.
• In addition there is a typographical error in the word “headgear” in Class 25 and the wording “holdalls, rucksacks” is duplicated and needs to be clarified or removed.

 

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.

 

RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods and services to which the final refusal requirements apply will be deleted from the application by Examiner’s Amendment: 

 

Class 25: holdalls, rucksacks (duplicated entry)

 

Class 41: computer game services provided remotely by means of the internet; publishing of computer game publications, namely, books featuring computer games and computer game software          

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and services only:

 

Class 14: Jewellery; jewellery chains; pendants; watches; brooches being jewellery; lapel pins; key chains

                                                                           

Class 18: Luggage; bags, namely, gym bags, sports bags, textile shopping bags, travelling bags, handbags, holdalls, rucksacks, backpacks, briefcases, music cases, satchels; cosmetic bags sold empty; wallets; purses; messenger bags; fanny packs; key cases; leather shoulder belts; umbrellas

 

Class 25: Clothing, namely, trousers, t-shirts, sweatshirts, jumpers, polo-shirts, casual and leisure jackets, shirts, shorts, socks, underwear, swimwear, nightwear; hea[d]gear, namely, hats and caps; Halloween costumes; masquerade costumes; belts; shoes and boots

                                                                                                                      

Class 41: Entertainment services, namely, providing on-line computer games and providing on-line non-downloadable computer game software; 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; music publishing; film production, other than advertising films; 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; information and advisory services in the field of computer game entertainment and publishing

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

/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 March 22, 2021 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 March 22, 2021, 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.”