To: | NSWE S.C.S (trademark@leydig.com) |
Subject: | U.S. Trademark Application Serial No. 90755347 - LAS VEGAS VILLAINS - 754637 |
Sent: | February 22, 2022 11:56:08 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90755347
Mark: LAS VEGAS VILLAINS
|
|
Correspondence Address: |
|
Applicant: NSWE S.C.S
|
|
Reference/Docket No. 754637
Correspondence Email Address: |
|
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: February 22, 2022
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
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Although no similar registered or pending mark has been found that would bar registration, applicant must respond to the following requirements.
The attached evidence from Wikipedia shows that Las Vegas is a generally known geographic place or location. See TMEP §§1210.02 et seq. The goods and/or services for which applicant seeks registration originate in this geographic place or location as shown by the attached evidence showing that Applicant is seeking to begin a Major League Soccer franchise in Las Vegas, Nevada. See TMEP §1210.03. Because the goods and/or services originate in this place or location, a public association of the goods and/or services with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LAS VEGAS” 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.
IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify the wording in the identification of goods and/or services because, as noted below, some items are indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Further, this wording could identify goods and/or services in more than one international class. For example, the wording “clothing” and “sports apparel” in the identification of goods in International Class 25 is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Examples of acceptable identifications for clothing and/or apparel in International Class 25 include the following: “shirts,” “shorts,” “pants,” “coats,” “dresses,” “skirts,” and “socks.” Applicant may also amend the identification by inserting the word “namely,” after “apparel” and “clothing” and then listing the specific types of clothing items.
Applicant may substitute the following wording, if accurate. Please note that suggested wording is underlined:
Class 9 – downloadable video game software; downloadable mobile phones and mobile phone applications for _________ (Applicant
must specify the functionality of the applications, e.g. playing games, sports betting.); sunglasses; internet web links in the field of sports and sporting events (Please note that this
wording is misclassified, see Class 41 suggested wording, unless the provision of web links is done through the downloadable software. If so, Applicant must so
state.); downloadable posters; downloadable sports trading cards; downloadable tickets; downloadable calendars; downloadable magazines in the field of
sports
Class 16 – printed posters; printed sports trading cards; printed tickets; printed calendars; printed magazines in the field of sports; paper banners; printed ticket and scheduling booklets
Class 24 – plastic, vinyl or cloth banners
Class 25 – Clothing, namely _________ (Applicant must specify the common commercial name of the apparel and classify them properly.); sports apparel namely _________ (Applicant must specify the common commercial name of the apparel and classify them properly.); wrist bands as clothing; ponchos
Class 28 – Toys namely _________ (Applicant must specify the common commercial name of the toys and classify them properly.); sports balls; sporting goods namely _________ (Applicant must specify the common commercial name of the sporting goods and classify them properly.); games namely _________ (Applicant must specify the common commercial name of the games and classify them properly.); video game consoles; sport gloves namely _________ (Applicant must specify the sport, e.g. soccer.); toy foam novelty items, namely, foam hands and foam fingers; lottery tickets; trading cards for games
Class 41 – Sports, namely __________ (Applicant must specify the type of services being provided in Class 41, e.g. organizing soccer matches, operation of sports camps.), games namely __________ (Applicant must specify the type of services being provided in Class 41, e.g. organizing video game tournaments.), and organizing exhibitions for sporting and entertainment purposes; provision of sports information; sports entertainment events namely __________ (Applicant must specify the type of services being provided in Class 41, e.g. organizing soccer matches.); sport contests namely organization and conducting of sporting competitions; providing an interactive website featuring internet web links in the field of sports and sporting events
Class 42 – providing temporary use of non-downloadable video game software; providing temporary use of non-downloadable mobile phones and mobile phone applications for _________ (Applicant must specify the functionality of the applications, e.g. playing games, sports betting.)
Please note that the wording in classes 14 and 21 are acceptable.
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.
Effective January 1, 2022, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services. See Nice Classification, 11th ed., version 2022 (Nice 11-2022). Applications filed on or after January 1, 2022 must comply with this new version. See 37 C.F.R. §2.85(e)(1); TMEP §1401.09. Applications filed prior to this date must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version. See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09. If applicant chooses to comply with the new version, the entire identification must comply with this version. See 37 C.F.R. §2.85(e)(2); TMEP §1401.09. The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries. See TMEP §1402.04.
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 8 classes; however, applicant submitted a fee(s) sufficient for only 7 class(es). 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
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.
Alain (Alan) Lapter, Esq.
/Alain (Alan) Lapter/
Trademark Examining Attorney
Law Office 105
email: alain.lapter@uspto.gov
phone: 571-272-3162
RESPONSE GUIDANCE