UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/648029

 

Search Results

 

Information regarding pending Application Serial No. 76/211856 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Identification of Goods

 

The current wording used to describe the goods needs clarification as set forth in detail below.  TMEP §1402.01.

 

“Electric and electronic apparatus and instruments” is vague.  The applicant must identify each such item by its common commercial name.  The phrase “all the aforesaid goods relating to security and access control systems” does not provide enough information.  The applicant may not simply allude to what its goods “relate to,” but rather must state clearly what the goods are.

 

“Surveillance, measuring and checking (supervision) apparatus and instruments” is vague.  In addition, the applicant may not use parentheses in an application.  The applicant must supply the common commercial name of each such item, as in, “electric and electronic video surveillance installations, in International Class 9.”

 

“Alarms and warning devices” is vague. The applicant must supply the common commercial name of each such item, as in, “fire alarms, in International Class 9,” “burglar alarms for vehicles, in International Class 12” or “alarm clocks, in International Class 14.”

 

“Parts and fittings for all the aforesaid goods” is vague.  Although the Trademark Office used to accept this phrase, it now is considered vague.  The applicant may substitute “and structural parts therefor.”

 

“Integrated access control and alarm systems” is vague.  Whenever the applicant uses the term “systems,” the applicant must follow this with “comprised of” and a list of the major components of the system.  The most important item must be listed first; it will determine the proper classification of the entire system.

 

“Integrated access control and alarm systems incorporating computer software and hardware” is vague.  The applicant must use the “comprised of” formula noted above, and also must clearly state what is being controlled and alarmed.

 

“Closed circuit television” is vague.  Is a good or a service intended?  If accurate, the applicant may adopt “television sets for use with closed circuit television.”

 

“Encoded and encrypted magnetic cards” is vague.  The purpose of the cards must be stated, as in “encoded and encrypted magnetic cards for use in _______.”

 

“Key pads” is vague.  If accurate, the applicant may adopt “magnetically encoded key cards.”

 

“Card readers” is vague.  If accurate, the applicant may adopt, “electronic card readers.”

 

“Lighting and heating control systems” is vague.  If accurate, the applicant may adopt, “lighting control panels” and “electric control devices for heating and energy management.”

 

“Integrated access control, alarm, lighting and heating control systems” is vague.  Comments about each item in this list appear above.

 

“Closed circuit television” appears twice; one of the two entries must be deleted.  As explained above, the phrase “apparatus and instruments” is vague.

 

“Time recording apparatus and instruments” is vague.  The applicant must identify each such item by its common commercial name. 

 

“Special guard and security guard control software” is vague.  The applicant must state the function of the software more clearly.  For example, does it keep track of the location and time worked for human security guards?  Or does the software control access to computer systems?

 

“Guard and security guard control hardware” is vague.  The comments regarding “guard and security guard control software” apply to this entry as well.

 

“Computer alarm systems” is vague.  As explained above, the applicant must add “comprised of” followed by a list of items that make up the system.  The applicant also should state the purpose of the goods.

 

“Electronic installations” is vague.  The applicant must identify each such item by its common commercial name.

 

“Security management systems incorporating alarms.”  As explained above, the applicant must add “comprised of” followed by a list of items that make up the system.  The applicant also should state the purpose of the goods.

 

“Parts and fittings for the aforesaid goods” is no longer acceptable.  If accurate, the applicant may adopt, “and structural parts therefor.”

 

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.gov.uspto.report/netahtml/tidm.html.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

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).

 

Because it is possible that, when properly identified, the applicant’s goods may belong in more than one international class, information about adding classes to an application is set forth below:

 

Combined Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Drawing

 

Applicant must submit the following color claim and color description:  (1) a statement that “the colors black and red are claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the color(s) ___ appear in ___.”  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

While the applicant has made a proper color location claim, the claim of color as a feature of the mark must be stated separately, as noted above.

 

Certificate Required

 

If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

Option to Delete Basis

 

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration.  Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

 

 

 

 

/Doritt Carroll/

Trademark Examining Attorney

Law Office 116

Phone:  (571) 272-9138

Fax:      (571) 273-9138

www.gov.uspto.report/teas/index.html

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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