Offc Action Outgoing

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

Amendment to Identification of Goods

The identification of goods requires the following amendments:

The wording “computer gaming machines” and “operating system programs and utilities” are indefinite and must be clarified. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “apparatus” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a). Thus, the applicant must amend the wording “car audio apparatus” and “parts and accessories for mobile telephones” by specifying the types of goods under each relevant category.

The wording “a full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files” and “a full line of computer software for business, home, education, and developer use; computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files” in the identification of goods must be clarified because they are too broad and could include goods in other international classes. An identification of goods comprising a full line of products must be classifiable in one international class. TMEP §1402.03(c).

The wording “digital data” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. TMEP §§1402.01 and 1402.03. Digital media is classified under International Class 9 and electronic mail and digital media transmission services are classified under International Class 38. The wording “electronic mail” requires further clarification as the nature of the good or service is unclear; software for electronic mail is classified under International Class 9.

The wording “telecommunications software” requires further clarification as to the function of the software. In addition, applicant must indicate the relevant field of the “downloadable audio and video files, movies, ring tones, video games, television programs, pod casts, and audio books via the internet and wireless devices.”

Applicant may adopt any or all of the following identification, if accurate. TMEP §1402.01.

Class 9: Computer hardware; computer hardware, namely, server, desktop, laptop and notebook computers; computer memory hardware; computer disc drives; optical disc drives; computer hardware, software and computer peripherals for communication between multiple computers and between computers and local and global computer networks; computer networking hardware; set top boxes; computer hardware and computer software for the reproduction, processing and streaming of audio, video and multimedia content; computer hardware and software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content; computer monitors; liquid crystal displays; flat panel display monitors; computer keyboards, cables, modems; computer mice; electronic docking stations; stands specially designed for holding computer hardware and portable and handheld digital electronic devices; batteries; rechargeable batteries; battery chargers; battery packs; power adapters for computers; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for computers and portable and handheld digital electronic devices; headphones and earphones; stereo headphones; in-ear headphones; stereo amplifier and speaker base stations; stereo speakers; audio speakers; microphones; car audio apparatus, namely, [insert types of goods, e.g. stereos, tuners, etc…]; sound systems comprising remote controls, amplifiers, loudspeakers and components thereof; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; electronic memory card readers; personal digital assistants; portable digital audio and video players; electronic organizers; cameras; telephones; mobile phones; videophones; computer gaming machines [specify whether good is with or without video output]; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, ~~electronic mail and other~~ digital data, namely, digital media in the field of [insert relevant field]; MP3 and other digital format audio and video players; portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; ~~a full line of~~ electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; parts and accessories for mobile telephones, namely, [insert types of goods, e.g. keyboards, etc…]; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; carrying cases, sacks, and bags, all for use with computers and portable and handheld digital electronic devices; computer programs, namely, operating system programs and utilities; ~~a full line of~~ computer software for business, home, education, and developer use; computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; computer programs for personal information management; database management software; character recognition software; electronic mail and messaging software; telecommunications software, namely, [specify function of software]; database synchronization software; computer programs for accessing, browsing and searching online databases; computer software to develop other computer software; computer software for use as a programming interface; computer software for use in network server sharing; local and wide area networking software; computer software for matching, correction, and reproduction of color; computer software for use in digital video and audio editing; computer software for use in enhancing text and graphics; computer software for use in font justification and font quality; computer software for use to navigate and search a global computer information network; computer software for use in word processing and database management; word processing software incorporating text, spreadsheets, still and moving images, sounds and clip art; computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio, video, still images and other digital data; computer software for analyzing and troubleshooting other computer software; children's educational software; computer game software; computer graphics software; computer search engine software; website development software; computer software for remote viewing, remote control, communications and software distribution within personal computer systems and across computer networks; computer programs for file maintenance and data recovery; computer software for recording and organizing calendars and schedules, to-do lists, and contact information; computer software for clock and alarm clock functionality; computer software and prerecorded computer programs for personal information management; ~~electronic mail and messaging software; computer programs for accessing, browsing and searching online databases~~; computer software and firmware for operating system programs; blank computer storage media; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; downloadable electronic publications in the nature of books, magazines, pamphlets, brochures, newsletters, journals and magazines in the fields of sporting and cultural events, computer hardware and software applications, telecommunications, K-12 education and university-level subjects, education, music, film, video games, and a wide range of topics of general interest; downloadable audio and video files, movies, ring tones, video games, television programs, pod casts and audio books via the internet and wireless devices in the field of [insert relevant field or subject matter]; instructional manuals packaged in association with the above; and/or

Class 38: Electronic mail and digital media transmission services.

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 and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.

If applicant prosecutes this application as a combined, or multiple-class application, 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; 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.

Response

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.

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

/Angela Gaw/

Trademark Examining Attorney

Law Office 104

Phone: (571) 272-1347

Fax: (571) 273-9104

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 Office’s Response to Office action 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.