UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/065860

 

This letter responds to the applicant’s communication filed on October 30, 2003.  The applicant has deleted its Section 44 basis.  Accordingly, the application has been removed from suspension and prosecution of the application may resume.

 

Registration was refused on the grounds that the applicant failed to provide the Office with an acceptable identification of goods.  The applicant’s proposed amended wording of the goods submitted on January 29, 2002 is unacceptable.  Accordingly, the refusal to register is hereby made FINAL on the following grounds.

 

Identification of Goods: International Class 9

(1) The proposed amended wording “mobile phone games and personal digital assistance” in the identification of goods for International Class 9 is unacceptable as indefinite. Furthermore, it exceeds the scope of the original identification and suggests services. Accordingly, it must be deleted from the identification of goods. 

 

As stated in the Office action dated August 8, 2001, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

(2) The wording “sound and video recordings and reproduction apparatus; program memory cartridges for electronic amusement apparatus” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “sound and video recordings and reproduction apparatus, namely, [list specific goods, e.g., digital audio tape http://atlas.uspto.gov/netacgi/ - h4http://atlas.uspto.gov/netacgi/ - h6recorders, digital video http://atlas.uspto.gov/netacgi/ - h5http://atlas.uspto.gov/netacgi/ - h7recorders]; computer program memory cartridges for electronic amusement apparatus,” if accurate.  TMEP §1402.01.

 

Identification of Goods: International Class 16

The wording “printed matter; printed publications namely, books, manuals, comics, brochures, pamphlets and magazines featuring science fiction and entertainment; photographs; posters; stationery” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Printed publications namely, books, manuals, comics, brochures, pamphlets and magazines featuring science fiction and entertainment; photographs; posters; stationery,” if accurate.  TMEP §1402.01.

 

Identification of Goods: International Class 28

(1) The wording “collectable figurines” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “collectable toy figurines made of molded plastic,” if accurate.  TMEP §1402.01.

 

(2) The applicant has classified “trading cards” incorrectly.  The applicant must amend the application to classify the goods in International Class 16.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

(3) The wording “electronic table games with electro-optical screen” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “arcade-type http://atlas.uspto.gov/netacgi/ - h4http://atlas.uspto.gov/netacgi/ - h6electronic education video http://atlas.uspto.gov/netacgi/ - h5http://atlas.uspto.gov/netacgi/ - h7games,” if accurate.  TMEP §1402.01.

 

Please note the Following

The above suggested identifications of goods are acceptable as written.  Any alteration may render them unacceptable.  Accordingly, if the applicant wishes to amend the goods differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

Please further note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP § 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the original identification. 

 

How to Respond

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

 

 

 

 

 

 

/GFosdick/

Geoffrey Fosdick

Trademark Attorney

Law Office 111

(540) 851-0865

ecom111@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.uspto.gov/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.