KIDS PAD's document images as well as hints on its purpose is for:
http://tdr.uspto.gov/jsp/DocumentViewPa ... /false#p=1http://tdr.uspto.gov/jsp/DocumentViewPa ... /false#p=1 APPLICATION SERIAL NO. 85264286
MARK: KIDS PAD
*85264286*
CORRESPONDENT ADDRESS:
SHAUNA M. WERTHEIM
THE MARBURY LAW GROUP, PLLC
11800 SUNRISE VALLEY DR STE 1000
RESTON, VA 20191-5332
CLICK HERE TO RESPOND TO THIS LETTER:
http://www.uspto.gov/trademarks/teas/response_forms.jsp APPLICANT: SEGA TOYS CO., LTD.
CORRESPONDENT’S REFERENCE/DOCKET NO:
1372-043T
CORRESPONDENT E-MAIL ADDRESS:
[email protected] OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 5/12/2011
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 Applicant Must Address
(1) Prior pending application (advisory)
(2) Trademark Act Section 2(e)(1) refusal
(3) Identification and classification of goods
Prior Pending Application
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
The filing date of pending Application Serial No. 85255750 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.
Refusal Under Section 2(e)(1): Applied-For Mark Is Merely Descriptive
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
Applicant has applied to register the mark KIDS PAD in stylized form for use in connection with “Handheld computers; Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, and video files; Video monitors for tablet computers and portable and handheld digital electronic devices; Computer programs; Recorded media for computer programs” and “Handheld games with liquid crystal displays; Electronic and mechanical game equipment; Handheld unit for playing electronic games; Toys, namely electronic toy robots, games and playthings.”
In this case, both the individual components and the composite results are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the words in the mark are defined as follows:
KIDS: “a child or young person”
PAD: identifies a “pad computer” or “tablet computer” which is defined as “A complete computer contained in a touch screen. Tablet computers can be specialized for Internet use only or be full-blown, general-purpose PCs. The distinguishing characteristic is the use of the screen as an input device using a stylus or finger.”
Please see the attached evidence from
www.dictionary.com,
http://encyclopedia2.thefreedictionary. ... t+computer and
http://encyclopedia2.thefreedictionary.com/pad+computer.
The word “KIDS” is merely descriptive of applicant’s goods because the wording identifies the intended user of the goods. A mark that describes an intended user or group of users of a product or service is merely descriptive. E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).
The word “PAD” is merely descriptive of the goods because applicant’s goods include tablet computers and related devices.
When used together, the wording “KIDSPAD” merely describes a feature of the goods, namely, that the applicant’s goods consist of tablet computer devices for kids.
The applied-for mark shows the wording in stylized lettering. However, the degree of stylization in this case is not sufficiently striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark. See In re Sambado & Son Inc., 45 USPQ2d 1312 (TTAB 1997); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987).
Accordingly, the proposed mark is refused under Trademark Act Section 2(e)(1). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
RESPONSE OPTION: SUPPLEMENTAL REGISTER
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
To amend the application filing basis from an intent-to-use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76. See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.
The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):
(1) The following statement: “Applicant is believed to be the owner of the mark and that the mark is in use in commerce;”
(2) The date of first use of the mark anywhere on or in connection with the goods and/or services;
(3) The date of first use of the mark in commerce as a trademark or service mark;
(4) A specimen showing actual use of the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;
(5) A filing fee of $100 per class for each international class of goods and/or services for which use is being asserted (current fee information should be confirmed at
http://www.uspto.gov/); and
(6) Verification of the above (1) through (3) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.
See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b), 2.193(e)(1); TMEP §§1104.08, 1104.09(e).
Amendments to allege use can be filed online at
http://www.uspto.gov/teas/index.html. Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action. TMEP §1104.
Applicant must respond to the requirement(s) set forth below.
Identification and Classification of Goods
The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
The goods include computer software; however, the wording used to describe the software is indefinite and must be clarified to indicate the purpose or function of the software. If the software is field-specific, applicant must also specify the field of use. TMEP §1402.03(d). Clarification of the purpose, function or field of use of the software is necessary to permit proper examination of the application and to enable the Office to 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).
The wording “Handheld unit for playing electronic games” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. If the goods are “for use with external display screen or monitor,” the goods belong in Class 09. If the goods are “other than those adapted for use with an external display screen or monitor,” the goods belong in Class 28. See TMEP §§1402.01, 1402.03.
The following is an amended version of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type.
Applicant may adopt the following identification of goods, if accurate:
CLASS 09: Handheld computers; Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files, namely, {specify the common commercial name of the goods, e.g., tablet computers}; Video monitors for tablet computers and portable and handheld digital electronic devices; Computer programs for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; pre-recorded {specify type, e.g., digital, electronic} media featuring {indicate subject matter} for computer programs; hand-held unit for playing electronic games for use with external display screen or monitor
CLASS 28: Handheld games with liquid crystal displays; Electronic and mechanical game equipment, namely, {specify the nature of the game equipment, e.g., arcade game machines}; Handheld unit for playing electronic games other than those adapted for use with an external display screen or monitor; Toys, namely, electronic toy robots, {specify type of games, e.g., arcade} games and playthings, namely, {specify the common commercial name of the goods, e.g., dolls}
An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at
http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
CONTACT INFORMATION
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 §§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.
/Christine C. Martin/
Trademark Examining Attorney
Law Office 104
Phone: 571-272-1630
Email:
[email protected] TO RESPOND TO THIS LETTER: Go to
http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail
[email protected]. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at
http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see
http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at
http://www.uspto.gov/teas/eTEASpageE.htm.
