Offc Action Outgoing

This letter responds to applicant’s communication filed on May 29, 2008. Following careful consideration of the entire submission and re-review of the application, the examining attorney concludes as follows:

In the first Office Action dated November 25, 2008, applicant was required to amend the identification of goods and services, add a translation, and specify any significance of the mark.

The significance information in the response is acceptable. The translation requirement is hereby withdrawn.

While applicant’s response includes a proposed amendment to the identification, it is still not acceptable for the reasons set forth below. The identification amendment requirement is now made FINAL. See37 C.F.R. §2.64(a).

FINAL, PARTIAL Identification of Goods and Services Amendment Requirement and Missing Fee Requirement

THIS REQUIREMENT APPLIES TO THE GOODS AND SERVICES HEREIN ONLY

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(c).

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007). Descriptions of goods and services in applications must be specific, explicit, clear and concise. TMEP §1402.01; see Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966).

The wording “light emitting diode modules for use in television receivers, mobile phones, and personal digital assistants” and “LED modules for use in vehicle lighting and for use in interior and landscape lighting” in the identification of goods and/or services needs further amendment, because the nature of the goods and/or services is still unclear. See TMEP §§1402.01, 1402.03(a). Please see suggestions below.

The wording “liquid crystal display televisions” needs amendment, because it exceeds the scope of the original identification. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Please see suggestion below.

The application included filing fees in the amount of $750 for 2 class(es), but a third class was added in the response to office action, International Class 12: “Instrument panels for vehicles”. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01. Therefore, applicant must either (1) restrict the application to the 2 class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional International Class 12. The filing fee for adding classes to an application is as follows:

(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

The current identification of goods and/or services reads as follows:

International Class 9: Light emitting diodes; light emitting diode modules for use in television receivers, mobile phones, and personal digital assistants; television receivers; mobile phones; personal digital assistants; liquid crystal display video monitors for use with televisions and computers; liquid crystal display televisions; and navigation apparatus for vehicles

International Class 11: Electric lamps; LED modules for use in vehicle lighting and for use in interior and landscape lighting; lighting fixtures for vehicles; and lighting fixtures for interior and landscape lighting installations

International Class 12: Instrument panels for vehicles

The following wording in the current identification is acceptable, because it is sufficiently definite, within the scope of the original identification, and properly classified:

International Class 9: Light emitting diodes; television receivers; mobile phones; personal digital assistants; liquid crystal display video monitors for use with televisions and computers; and navigation apparatus for vehicles

International Class 11: Electric lamps; lighting fixtures for vehicles; and lighting fixtures for interior and landscape lighting installations

International Class 12: Instrument panels for vehicles

Applicant may adopt the following revised identification, if accurate:

International Class 9: Light emitting diodes; light emitting diode light controls, namely, light emitting diode modules for use in television receivers, mobile phones, and personal digital assistants; television receivers; mobile phones; personal digital assistants; liquid crystal display video monitors for use with televisions and computers; liquid crystal display television monitors; and navigation apparatus for vehicles

International Class 11: Electric lamps; LED fixtures, namely, LED modules for use in vehicle lighting and for use in interior and landscape lighting; lighting fixtures for vehicles; and lighting fixtures for interior and landscape lighting installations

International Class 12: Instrument panels for vehicles [no fee paid for this added class]

TMEP §1402.01.

The requirement refers to the following goods and/or services: “light emitting diode modules for use in television receivers, mobile phones, and personal digital assistants”, “liquid crystal display televisions”, “LED modules for use in vehicle lighting and for use in interior and landscape lighting”, and “Instrument panels for vehicles”, and does not bar registration for the remaining goods.

Applicant may respond to the requirement by doing one of the following:

(1) amending or deleting the goods and/or services to which the refusal pertains;

(2) arguing against the requirement; or

(3) filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition for those goods and/or services to which the requirement does not pertain (See 37 C.F.R. § 2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide).

Amendment Guidelines

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

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. See TMEP §1402.04.

Response Guidelines for Final Actions

If applicant does not respond within six months of the mailing date of this final Office action, the following goods to which the final requirement(s) apply will be deleted from the application by Examiner’s Amendment: “light emitting diode modules for use in television receivers, mobile phones, and personal digital assistants”, “liquid crystal display televisions”, “LED modules for use in vehicle lighting and for use in interior and landscape lighting”, and “Instrument panels for vehicles”. The application will then proceed for the remaining goods. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

Tina M. Kuan

/Tina M. Kuan/

Trademark Examining Attorney

Law Office 108

Phone Number: 571-272-4110

Fax Number: 571-273-4110

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.