| To: | SMK Corporation (allmarktrademark@gmail.com) |
| Subject: | TRADEMARK APPLICATION NO. 77052420 - SMK - 1986-007 |
| Sent: | 11/6/2007 5:49:33 AM |
| Sent As: | ECOM108@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/052420
MARK: SMK
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: SMK Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 11/6/2007
THIS IS A PARTIAL FINAL ACTION. Applicant should note the response requirements below, and the result if no response is submitted.
This is in response to applicant’s correspondence of October 1, 2007 regarding the trademark application identified above. In office action number 1, the examining attorney:
(1) Required applicant to amend its identification of goods and provide for any additional classes of goods, if appropriate,
(2) Required applicant to indicate if the trademark has any significance, and
(3) Advised applicant of its option to designate a domestic representative.
In its response:
(1) Applicant amended its identification of goods. However, the goods identification remains unacceptable for the reasons discussed below. Additionally, the application may identify goods in more than one international class. Accordingly, these requirements are continued and made FINAL,
(2) Applicant indicated that the trademark has no significance. Accordingly, this requirement is no longer outstanding, and
(3) Applicant did not elect to designate a domestic representative. This is not a requirement.
The following requirements are continued and made FINAL.
The wording in the identification of goods needs clarification because parts of the wording remain unclear and indefinite. 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.
Applicant may adopt the following identification of goods (providing additional information 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 walkie-talkies and two-way radios; 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; Connective electrical terminals for use in audio and video devices; Speaker terminals, for use in connecting speakers of an audio system; Screw-type terminals, connective terminals with screw-type connective parts, used to connect audio and video devices; Push and lever terminals, used to connect audio and video devices; Voltage monitor modules; Voltage stabilizers; Camera modules, namely, a modular component incorporated into mobile devices such as cell phones, and is capable of processing images taken via its lens and outputting them through electronic signals; Power line communications module, for use in converting power lines into transmission paths for network data communications and the control of household appliances; Electric plugs, laser pointers, remote control units for televisions, stereos, DVD players, CD players, videocassette players and audio cassette players; Battery and electronic device chargers, 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. voltmeters, laser rangefinders).
TMEP §1402.01.
The wording “Electronic modules used to control and limit power usage in household appliances” is indefinite and must be replaced with the common commercial name of the goods.
The wording “electrical mounting cradles” is indefinite and must be amended to better identify the use of the goods. The wording “cellular phone accessories, namely electrical mounting cradles for use in mounting cellular phones for hands-free use” would be acceptable, if accurate.
The wording “Voltage regulators for electric power” and “Electrical fuses” is beyond the scope of the identification of goods as originally submitted and therefore must be deleted from the goods.
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 application may identify goods that are classified in at least one additional 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.
If applicant does not respond within six months of the mailing date of this final action, the following goods to which the final requirement applies will be deleted from the application by Examiner’s Amendment:
“Electronic modules used to control and limit power usage in household appliances”
“Electrical mounting cradles”
“Voltage regulators for electric power”
“Electrical fuses”
“Electric measuring devices”
The application will proceed forward for the following goods:
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 walkie-talkies and two-way radios; 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; Connective electrical terminals for use in audio and video devices; Speaker terminals, for use in connecting speakers of an audio system; Screw-type terminals, connective terminals with screw-type connective parts, used to connect audio and video devices; Push and lever terminals, used to connect audio and video devices; Voltage monitor modules; Voltage stabilizers; Camera modules, namely, a modular component incorporated into mobile devices such as cell phones, and is capable of processing images taken via its lens and outputting them through electronic signals; Power line communications module, for use in converting power lines into transmission paths for network data communications and the control of household appliances; Electric plugs, laser pointers, remote control units for televisions, stereos, DVD players, CD players, videocassette players and audio cassette players; Battery and electronic device chargers, 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.
15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); 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) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Fred Carl III/
Law Office 108
571 272 8867 voice
571 273 9108 fax for official communication only
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.