Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

IC 9:  Electronic cables for electronic transmission; optical cables for optical signal transmission; cables in the nature of electric cables; electric cables; communications controllers in the nature of downloadable software for monitoring and controlling communication between computers and automated machines systems; computer keyboard controllers; electronic controllers in the nature of electrical controllers, power controllers and ethernet controllers; memory controllers for use with computers in the nature of electrical controllers, power controllers, and ethernet controllers; mouse controllers in the nature of computer cursor control devices, namely, computer mice not adapted for use in playing video games; communications headsets for use with computers; sound receiving headsets for use with computers; electronic remote controls for radios, televisions and stereos; battery boxes; battery packs; batteries; chargers for electric batteries; electric apparatus for charging batteries in the nature of battery charge devices; power packs in the nature of battery packs; computer memories, memory expansion cards, and handheld external  computer hard drives for use with electronic games of all kinds; wired earbuds; mouse pads; computer keyboards and keyboards for mobile phones; wireless charging stands for headphones; [delete “web cams; led light rings; tripods” because they are beyond the scope of the original identification]; [clarify “computer cooling stand”, e.g., computer cooling stand in the nature of [specify]];  [clarify “portable console holders for consumer video game apparatus and peripherals and computer peripherals”]; [clarify “mixing decks for streaming”]; protective cases for tablet computers; protective cases for mobile phones; battery cases; gaming headsets, namely, headsets for virtual reality games; [delete “backpacks designed to hold gaming laptops and accessories” because it is beyond the scope of the original identification which reads “cases”]

 

IC 16:  Trading card deck boxes, namely, plastic storage boxes specially designed to hold [clarify “trading cards”, e.g., collectible trading cards and sports trading cards], sold empty; plastic sleeves for holding and protecting [clarify “trading cards”, e.g., collectible trading cards and sports trading cards]; binders; gift bags sold empty; carrying cases specially adapted to hold collectible trading cards

 

IC 28:  Controllers for game consoles in the nature of game controllers for computer games; game controllers for use with electronic computer games; apparatus for electronic games other than those adapted for use with an external display screen or monitor; apparatus for games adapted for use with an external display screen or monitor; computer games apparatus, namely, game controllers for computer games; computer game apparatus adapted for use with an external display screen or monitor in the nature of gaming mice; electronic games in the nature of handheld game consoles; hand-held units for playing electronic games adapted for use with an external display screen or monitor; joysticks for use with electronic computer games; joysticks for use with computer games consoles; playing card game accessories, namely, playing cards, playing card cases, playing card holders, mats for use in connection with playing card games, playing card shuffling devices and dice; [clarify “dice trays”]; [clarify “gaming headsets”, e.g., gaming headsets adapted for use in playing video games]; gaming mice; video game consoles; toys, namely, stuffed toys, inflatable toys, talking toys; [delete “gaming chairs” because it does not appear to be within the scope of the original identification of goods]; protective carrying cases adapted for consumer video game machines; protective carrying cases specially adapted for handheld units for playing electronic games; storage cases specially adapted for handheld units for playing electronic games; Trading card deck boxes, namely, plastic storage boxes specially designed to hold [clarify “trading cards”, e.g., trading cards for games], sold empty; plastic sleeves for holding and protecting [clarify “trading cards”, e.g., trading cards for games]

 

 

 

 

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:  July 02, 2021

 

This Office action is in response to applicant’s communication filed on 6/3/21.  The examining attorney has determined as follows:

 

• The partial requirement that applicant amend the identification of goods is now made FINAL for the reasons set forth below. 37 C.F.R. §2.63(b), TMEP §§1402.01, 1402.06(a)-(b), 1402.07(a)-(b), (e). 

 

• In addition, the following refusal(s) and/or requirement(s) have been withdrawn: the partial Section 2(d) refusal as to U.S. Reg. No. 5584943. See TMEP §§713.02, 714.04.

 

• Please note the partial abandonment advisory at the end of the Office action.

 

PARTIAL REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF GOODS --FINAL

 

“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].”  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

                                                                     

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

                                                                                                                                             

The applicant has applied to register the mark for, as amended:

 

IC 9:  Electronic cables for electronic transmission; optical cables for optical signal transmission; cables in the nature of electric cables; electric cables; communications controllers in the nature of downloadable software for monitoring and controlling communication between computers and automated machines systems; computer keyboard controllers; electronic controllers in the nature of electrical controllers, power controllers and ethernet controllers; memory controllers for use with computers in the nature of electrical controllers, power controllers, and ethernet controllers; mouse controllers in the nature of computer cursor control devices, namely, computer mice not adapted for use in playing video games; communications headsets for use with computers; sound receiving headsets for use with computers; electronic remote controls for radios, televisions and stereos; battery boxes; battery packs; batteries; chargers for electric batteries; electric apparatus for charging batteries in the nature of battery charge devices; power packs in the nature of battery packs; computer memories, memory expansion cards, and handheld computer hard drives for use with electronic games of all kinds; wired earbuds; mouse pads; computer keyboards and keyboards for mobile phones; charging stands for headphones; web cams; led light rings; tripods; battery charging stands for consumer video game apparatus and peripherals and computer peripherals; computer cooling stand; portable console holders for consumer video game apparatus and peripherals and computer peripherals; mixing decks for streaming; protective cases for tablet computers; protective cases for mobile phones; battery cases; protective carrying cases adapted for consumer video game machines; protective carrying cases specially adapted for handheld units for playing electronic games; storage cases specially adapted for handheld units for playing electronic games; gaming headsets, namely, headsets for virtual reality games; backpacks designed to hold gaming laptops and accessories

 

IC 16:  Trading card deck boxes, namely, plastic storage boxes specially designed to hold trading cards, sold empty; sleeves for holding and protecting trading cards; binders; gift bags sold empty; carrying cases specially adapted to hold collectible trading cards

 

IC 28:  Controllers for game consoles in the nature of game controllers for computer games; game controllers for use with electronic computer games; apparatus for electronic games other than those adapted for use with an external display screen or monitor; apparatus for games adapted for use with an external display screen or monitor; computer games apparatus, namely, game controllers for computer games; computer games apparatus adapted for use with an external display screen or monitor in the nature of gaming mice; electronic games in the nature of handheld game consoles; hand-held units for playing electronic games adapted for use with an external display screen or monitor; joysticks for use with electronic computer games; joysticks for use with computer games consoles; playing card game accessories, namely, playing cards, playing card cases, playing card holders, mats for use in connection with playing card games, playing card shuffling devices and dice; dice trays; gaming headsets; gaming mice; video game consoles; toys, namely, stuffed toys, inflatable toys, talking toys; gaming chairs

 

Portions of the identification of goods are indefinite and must be clarified as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording, if accurate: 

 

IC 9:  Electronic cables for electronic transmission; optical cables for optical signal transmission; cables in the nature of electric cables; electric cables; communications controllers in the nature of downloadable software for monitoring and controlling communication between computers and automated machines systems; computer keyboard controllers; electronic controllers in the nature of electrical controllers, power controllers and ethernet controllers; memory controllers for use with computers in the nature of electrical controllers, power controllers, and ethernet controllers; mouse controllers in the nature of computer cursor control devices, namely, computer mice not adapted for use in playing video games; communications headsets for use with computers; sound receiving headsets for use with computers; electronic remote controls for radios, televisions and stereos; battery boxes; battery packs; batteries; chargers for electric batteries; electric apparatus for charging batteries in the nature of battery charge devices; power packs in the nature of battery packs; computer memories, memory expansion cards, and handheld external  computer hard drives for use with electronic games of all kinds; wired earbuds; mouse pads; computer keyboards and keyboards for mobile phones; wireless charging stands for headphones; [delete “web cams; led light rings; tripods” because they are beyond the scope of the original identification]; [clarify “computer cooling stand”, e.g., computer cooling stand in the nature of [specify]];  [clarify “portable console holders for consumer video game apparatus and peripherals and computer peripherals”]; [clarify “mixing decks for streaming”]; protective cases for tablet computers; protective cases for mobile phones; battery cases; gaming headsets, namely, headsets for virtual reality games; [delete “backpacks designed to hold gaming laptops and accessories” because it is beyond the scope of the original identification which reads “cases”]

 

IC 16:  Trading card deck boxes, namely, plastic storage boxes specially designed to hold [clarify “trading cards”, e.g., collectible trading cards and sports trading cards], sold empty; plastic sleeves for holding and protecting [clarify “trading cards”, e.g., collectible trading cards and sports trading cards]; binders; gift bags sold empty; carrying cases specially adapted to hold collectible trading cards

 

IC 28:  Controllers for game consoles in the nature of game controllers for computer games; game controllers for use with electronic computer games; apparatus for electronic games other than those adapted for use with an external display screen or monitor; apparatus for games adapted for use with an external display screen or monitor; computer games apparatus, namely, game controllers for computer games; computer game apparatus adapted for use with an external display screen or monitor in the nature of gaming mice; electronic games in the nature of handheld game consoles; hand-held units for playing electronic games adapted for use with an external display screen or monitor; joysticks for use with electronic computer games; joysticks for use with computer games consoles; playing card game accessories, namely, playing cards, playing card cases, playing card holders, mats for use in connection with playing card games, playing card shuffling devices and dice; [clarify “dice trays”]; [clarify “gaming headsets”, e.g., gaming headsets adapted for use in playing video games]; gaming mice; video game consoles; toys, namely, stuffed toys, inflatable toys, talking toys; [delete “gaming chairs” because it does not appear to be within the scope of the original identification of goods]; protective carrying cases adapted for consumer video game machines; protective carrying cases specially adapted for handheld units for playing electronic games; storage cases specially adapted for handheld units for playing electronic games; Trading card deck boxes, namely, plastic storage boxes specially designed to hold [clarify “trading cards”, e.g., trading cards for games], sold empty; plastic sleeves for holding and protecting [clarify “trading cards”, e.g., trading cards for games]

 

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.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the goods objected to above will be deleted from the application.  The application will then proceed with the following goods only:

 

IC 9:  Electronic cables for electronic transmission; optical cables for optical signal transmission; cables in the nature of electric cables; electric cables; communications controllers in the nature of downloadable software for monitoring and controlling communication between computers and automated machines systems; computer keyboard controllers; electronic controllers in the nature of electrical controllers, power controllers and ethernet controllers; memory controllers for use with computers in the nature of electrical controllers, power controllers, and ethernet controllers; mouse controllers in the nature of computer cursor control devices, namely, computer mice not adapted for use in playing video games; communications headsets for use with computers; sound receiving headsets for use with computers; electronic remote controls for radios, televisions and stereos; battery boxes; battery packs; batteries; chargers for electric batteries; electric apparatus for charging batteries in the nature of battery charge devices; power packs in the nature of battery packs; computer memories, and memory expansion cards for use with electronic games of all kinds; wired earbuds; mouse pads; computer keyboards and keyboards for mobile phones; wireless charging stands for headphones; protective cases for tablet computers; protective cases for mobile phones; battery cases; gaming headsets, namely, headsets for virtual reality games

 

IC 16:  Binders; gift bags sold empty; carrying cases specially adapted to hold collectible trading cards

 

IC 28:  Controllers for game consoles in the nature of game controllers for computer games; game controllers for use with electronic computer games; apparatus for electronic games other than those adapted for use with an external display screen or monitor; apparatus for games adapted for use with an external display screen or monitor; computer games apparatus, namely, game controllers for computer games; electronic games in the nature of handheld game consoles; hand-held units for playing electronic games adapted for use with an external display screen or monitor; joysticks for use with electronic computer games; joysticks for use with computer games consoles; playing card game accessories, namely, playing cards, playing card cases, playing card holders, mats for use in connection with playing card games, playing card shuffling devices and dice; gaming mice; video game consoles; toys, namely, stuffed toys, inflatable toys, talking toys

  

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

RESPONSES TO FINAL OFFICE ACTIONS

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@uspto.gov

 

 

 

MORE 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 July 02, 2021 for

U.S. Trademark Application Serial No. 90103851

 

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. 

 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@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 July 02, 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.”