To: | Valve Corporation (botrademarks@klgates.com) |
Subject: | U.S. Trademark Application Serial No. 90524967 - VALVE - N/A |
Sent: | June 02, 2021 02:54:39 PM |
Sent As: | ecom122@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90524967
Mark: VALVE
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Correspondence Address:
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Applicant: Valve Corporation
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 02, 2021
This Office action is supplemental and supersedes the previous Office action dated earlier today on June 2, 2021, which was issued in error. Please disregard the previous Office action. The Examining Attorney apologizes for any inconvenience.
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 OFFICE’S DATABASE OF MARKS
SUMMARY OF ISSUES:
IDENTIFICATION OF GOODS AND/OR SERVICES
The identification of goods and/or services must be clarified because it is indefinite or otherwise unacceptable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Additionally, the entries, “computer software for compressing and decompressing data and video images”, “computer operating system software programs and utility programs for use with the above referenced machines”, “computer software and hardware that facilitates communications over a wireless network” and the wording “associated data files” in the entry “downloadable computer software for messaging, chat and social networking; electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the field of games, provided by computer and communication network” in Class 9 are indefinite and too broad and must be clarified to specify whether the format is 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 a service in International Class 42. See TMEP §1402.03(d).
Additionally, the entry “computer operating system software programs and utility programs for use with the above referenced machines” may become unclear if applicant amends the classification for “Interactive video game devices comprised of computer hardware and software and accessories, namely, computer game consoles for use with an external display screen or monitor, computer game controllers and computer software for operating game controllers” as suggested above.
Applicant may substitute the following wording, if accurate (suggestions in bold; comments in bold italics):
International Class 9: “computer hardware and computer peripherals; downloadable computer software for compressing and decompressing data and video images; downloadable computer operating system software programs and utility programs for use with interactive video game devices and computer hardware and computer peripherals; downloadable computer software and computer hardware that facilitates communications over a wireless network; Downloadable computer software for the management, transmission, storage and sharing of computer game programs and electronically stored information across computer networks for downloading and use of games by users; downloadable computer software for multiplayer and collaborative gaming and e-sports; downloadable computer software for broadcasting, electronic transmission, and streaming of digital media content for gaming; downloadable computer software for gaming and e-sports competitions; downloadable computer software for streaming audio and video game content; downloadable computer software for messaging, chat and social networking; electronic software updates, namely, downloadable computer software and associated downloadable data files for updating computer software in the field of games, provided by computer and communication network; downloadable video game programs; computer game programs downloadable via the internet; downloadable computer game software for use on mobile and cellular phones”
International Class 28: “Interactive video game devices comprised of computer hardware and software and accessories, namely, computer game consoles for use with an external display screen or monitor, computer game controllers and recorded computer software for operating game controllers, sold together as a unit”
International Class 42: “Providing temporary use of online, nondownloadable computer software for compressing and decompressing data and video images; providing temporary use of online, nondownloadable computer operating system software programs and utility programs for use interactive video game devices and computer hardware and computer peripherals; providing temporary use of online, nondownloadable computer software and hardware that facilitates communications over a wireless network”
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).
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
(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 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
/C. Scott Strickland/
C. Scott Strickland
Examining Attorney
Law Office 122
571-272-3277
scott.strickland@uspto.gov
RESPONSE GUIDANCE