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  77/052420

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Search Results

 

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

 

Identification of the Goods

 

The wording in the identification of goods needs clarification because not all of the goods are identified by their common commercial names and some goods identified may fall in to additional international classes.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.

 

The wording “Bluetooth” in the identification of goods is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration Nos. 2909356 and 2911905.  In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  See Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958); TMEP §1402.09.

 

Therefore, applicant must amend the identification of goods by deleting the wording “Bluetooth” and substituting the common commercial or generic name for the goods. 

 

Applicant may adopt the following identification of goods (providing additional wording where directed), if accurate: 

 

Class 9

 

Mobile telephones; LAN hardware, LAN software; Telephone answering machines; Facsimile machines; Wireless network devices, namely, wireless network Universal Serial Bus dongles, headsets for use with wireless networked telephones, wireless network serial port adaptors and wireless network base stations; Liquid crystal displays; Computer hard disc drives; DVD players; Computer monitors; Computers; Computer pointing devices, namely, mouses and touch pads; Computer keyboards units computer membrane-keyboard units; Computer network routers; Modems; Personal digital assistants; Audio and video devices, namely, stereo receivers, CD players, radio speakers, audio cassette players, digital audio players, MP3 players; Flat panel display screens; PDP plasma display panel; LCD large-screen displays; Photocopiers; Portable information terminal devices, namely (identify these devices by their common commercial names. E.g. walkie-talkies); Audio-visual equipment, namely, movie projectors, video projectors, slide projectors, digital video cameras; digital still cameras; Televisions; Digital televisions; Car navigation computers; Radios; Audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; Wireless POS devices; Automated teller machines (ATM); Electronic vending machines for the issuing of tickets; Home theater systems, comprising televisions, LCD monitors, plasma monitors, DVD players and CD players; hard disk drive recorders; DVD recorders; Blank digital versatile disks; Headsets for telephones; Headsets for use with computers; Wireless communication handsets; Barcode scanners; Scanners; Full line of electrical components, namely, keyboard switches, switches, sockets, connectors, touch panels, ferrules, electric card assemblies, antennas, terminal boards, control panels, telephone and computer jacks, mini jacks, power supply jacks, pin jacks, and modular jacks; Electric plugs, laser pointers, remote control units for televisions, stereos, DVD players, CD players, videocassette players and audio cassette players; Battery and electronic device charges, namely, alternating current chargers and direct current chargers, charger stands; current converters, current modulators, video game interactive remote control units, microphones; Radio frequency identification tag readers; light emitting diode displays; Electric measuring devices, namely (identify the goods by their common commercial names. E.g. laser range finders); Amusement equipment, namely, video games machines for use with televisions

 

Class 20

 

Cradles

 

 

Class 28

 

Amusement equipment, namely, arcade video game machines and hand held unit for playing video games

 

TMEP §1402.01.

 

The examining attorney has not provided alternative wording for:

 

Terminals, namely, speaker terminals, earth terminals, push terminals, screw terminals, and lever terminals;

 

fuse holders

 

voltage selectors, cradles (in class 9)

 

Modules, namely, camera modules, power saving modules, power line communication modules

 

The nature of these goods cannot be determined from the wording provided. Applicant may delete these goods, amend them to more clearly identify them, or provide information on these goods to assist the examining attorney in correctly identifying them. TMEP §1402.01(e)

 

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.

 

Additional Classes of Goods

 

The application identifies goods that are classified in at least 3 classes; however, the fees submitted are sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810-810.01 and 1403.01.

 

Therefore, applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

In a multiple-class application based on use in commerce, a specimen is required for each class specified in the identification of goods and/or services.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  Therefore, if applicant amends the application to add international classes, applicant must submit a specimen showing use of the mark for each added class.  In addition, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce on or before the application filing date.”  37 C.F.R. §2.59(a).  If the additional specimen is identical to the specimen submitted with the application, and the application was properly verified, the verified statement is not necessary.

 

The application identifies goods and/or services in multiple international classes; however, the dates of use apply to fewer than all the classes identified.  A multiple-class application based on use in commerce must include dates of use for each class in the application.  37 C.F.R. §2.86(a)(3); TMEP §1403.01. 

 

Therefore, applicant must provide dates of first use and use in commerce for each class of goods and/or services.  If the dates differ from those of record, then applicant must verify the new dates with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP 903.05.

 

Applicant must list the goods and/or services by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01. If applicant responds online, applicant is not required to list the goods/services in ascending numerical order because it is not always possible.

 

Significance of SMK

 

Applicant must specify whether “smk” has any significance in the relevant trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Domestic Representative

 

Applicant may designate a domestic representative upon whom notices or process may be served.  If applicant does not designate a domestic representative, notices or process in proceedings affecting the mark may be served on the Director of the United States Patent and Trademark Office.  Trademark Act Sections 1(e) and 68(d), 15 U.S.C. §§1051(e) and 1141h(d); 37 C.F.R. §2.24; TMEP §604. 

 

Applicant is encouraged to file a designation of domestic representative online via the USPTO website at http://www.gov.uspto.report/teas/index.html.   Alternatively, the following format may be used to file a Designation of Domestic Representative on paper for submission via regular mail.

 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE

 

 

 

________________________            _________________________

Identify the mark            Serial No.

 

 

 

________________________            _________________________

Name of applicant            Date of signature

 

 

 

__________________________________________________________________

(Name of domestic representative)

 

 

whose postal address is ________________________________________________

________________________________________________

is hereby designated applicant’s representative upon whom notices or process in proceedings affecting the mark may be served.

 

 

 

____________________________

(Signature of applicant)

 

Response Guidelines

 

There is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be signed by applicant or someone with legal authority to bind applicant. TMEP §§712 et seq.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Fred Carl III/

Law Office 108

571 272 8867 voice

571 273 9108 fax for official communication only

 

 

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.