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 18, 2021

 

 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:

 

• Prior Pending Application
• Identification of Goods
• Disclaimer Required

 

Prior Pending Application

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 90058901 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  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.

 

Although applicant does not have to respond to the Prior Pending Application above, applicant must respond to the requirements below.

 

Identification of Goods

 

First, the applicant’s various identifications for game software and computer game programs in International Class 9 are indefinite and too broad and must be clarified to specify whether their formats are downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is an entertainment service in International Class 41.  See TMEP §1402.03(d).   

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). Similarly, applicant’s “video games for mobile devices” must be further specified as to the format of said “video games,” e.g., downloadable, non-downloadable, or recorded.

 

Second, “electronic devices featuring computer game software for use with computers and video game consoles” is indefinite because the nature of the “electronic devices” is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Third, the wording “downloadable digital media, namely, downloadable images, downloadable artwork, downloadable text files, downloadable audio files, downloadable video files, downloadable game software, and downloadable motion pictures” is also indefinite/unacceptable because the subject matter of said downloadable digital media is required. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Fourth, the wording “television production” is unacceptable because it is both indefinite and overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The nature of the service is unclear, and this service could include either “Television show production” in Class 41 or “Production of television commercials” in Class 35.

 

Applicant may adopt the following wording, if accurate: 

 

Class 9: Downloadable mobile application software, namely, downloadable electronic game programs; downloadable computer game software for use with on-line interactive games; downloadable video game programs for mobile devices; downloadable electronic game programs; downloadable electronic game software; downloadable computer game programs; downloadable interactive game programs; downloadable interactive game software; downloadable computer game software offered via the internet and wireless devices; downloadable computer game software for use with computers and video game consoles; downloadable computer and video game software offered via the internet and wireless devices; pre-recorded electronic media devices featuring downloadable computer game software for use with computers and video game consoles; pre-recorded digital media in the nature of CD-ROMs and DVDs featuring computer games and video games, wallpapers, screensavers, digital music files, and graphics, videos, films, multimedia files, motion pictures, and animation in the field of video games and computer games; downloadable digital media, namely, downloadable images, downloadable artwork, downloadable text files, downloadable audio files, downloadable video files, downloadable game software, and downloadable motion pictures, all in the field of video games and computer games

 

Class 41: Entertainment services, namely, providing on-line interactive computer games; online interactive games accessible via mobile phones and wireless devices; entertainment services, namely, providing information and entertainment in the nature of news, information, non-downloadable art pictures, non-downloadable video clips, and non-downloadable trailers relating to electronic computer games via the Internet; Providing non-downloadable electronic publications in the nature of books, magazines, journals and newspapers in the field of novels, comics and cartoons; movie film production; movie film distribution; television show production; rental of amusement machines and apparatus; rental of game machines and apparatus

 

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.

 

Disclaimer Required

 

Applicant must disclaim the wording “HI-FI” because it is merely descriptive of a quality, characteristic, or feature of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from the Oxford/Lexico Dictionary shows this wording means “of, used for, or relating to the reproduction of music or other sound with high fidelity.” The other attached evidence, from Gear Patrol, Wikipedia, and Wired, shows that the wording “HI-FI” is commonly used in the audio industry to describe the sound quality of audio recordings. Applicant has identified, among other things, “downloadable audio files,” “multimedia files,” and other similar digital files in their identification of goods and services. Presumably, applicant’s audio files, multimedia files, and video clips contain sound reproduced with high fidelity. Thus, the wording “HI-FI” merely describes applicant’s goods and services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “HI-FI” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Response Guidelines

 

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.

 

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.    

 

 

/Trenton M. Davis/

Trenton M. Davis

Trademark Examining Attorney

Law Office 109, USPTO

(571) 272-0593

Trenton.Davis@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 18, 2021 for

U.S. Trademark Application Serial No. 90398634

 

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. 

 

 

/Trenton M. Davis/

Trenton M. Davis

Trademark Examining Attorney

Law Office 109, USPTO

(571) 272-0593

Trenton.Davis@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 18, 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.”