Offc Action Outgoing

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  76/415794

 

This letter responds to the applicant’s communication filed on March 26, 2003.

 

Applicant was requested to amend the identification of goods because it was unacceptable as indefinite. The amendment to identification of goods has been reviewed, but also found unacceptable as indefinite.

 

For the reason stated below, the request to amend the identification of goods is maintained and made FINAL.

 

The Trademark Act requires a written application “specifying” the goods or services on or in connection with which an applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. § § 1051 (a)(1)(A) and 1051(b)(1)(A). To “specify” means to name in an explicit manner. Additionally, Trademark Rule 2.33(a)(1)(v), 37 C.F.R. § 2.33 (a)(1)(v), requires that the application specify the “particular” goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark. The identification of goods or services should set forth common names, using terminology, which is generally understood. For those product or services, which may not have common names, language, which is as clear and succinct as possible, should be used. Technical or esoteric language and lengthy descriptions of characteristics or use are not appropriate.

 

An acceptable identification of goods or recitation of services is required for three (3) reasons. First, it is important for the examining attorney to understand the exact nature of the goods and services for which registrations is sought, so that the attorney may properly analyze the application in accordance with the law and USPTO practices and procedures. Secondly, the language must be clear and acceptable for proper classification. Finally, the scope of the identification must be clear so that marks may be properly compared, particularly for Section 2(d) likelihood of confusion purposes. 15 U.S.C. § 1051(a)(1)(A) and 1051(b)(1)(A).

 

This application was filed listing the goods as:

 

         Accessories for use with audio players

 

The examining attorney advises applicant that the term “accessories” was indefinite and suggested it should be replaces with the common commercial name of the goods.

 

Applicant’s amendment filed March 24, 2003 listed the goods as:

 

         Accessories for use with audio players, namely, devices for

         encoding, storing and/or outputting audio files

 

The term “devices” is unacceptable as it is indefinite. The dictionary[1] defines Device as:

 

         A contrivance or an invention serving a particular purpose, especially

         a machine used to perform one or more relatively simple tasks

 

Clearly, the term “devices” is not the common commercial name of applicant’s goods. Using this terminology the examining attorney does not know what applicant’s goods are. The amendment is unacceptable.

 

The wording “devices” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Please 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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

Again, the applicant must indicate whether the letters “DJ” have any significance or meaning in the relevant trade or industry or as applied to the goods.  37 C.F.R. §2.61(b).

 

The request to set forth the significance of the DJ is maintained and made FINAL.

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

 

 

/Amos T. Matthews/

Examining Attorney

Law Office 108

(703) 308-9108 ext. 293

(703) 746-8108 (fax)

 

 

How to respond to this Office Action:

 

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

 

To respond formally via E-mail, visit http://www.gov.uspto.report/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.gov.uspto.report/

 

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

 

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