UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 8/7/2008

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

       I.     No Similar Marks to Bar Registration

 

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

 

    II.     Section 44(d) Presumed to Be Sole Basis – Certificate of Registration Required

 

Applicant asserts Trademark Act Section 44(d) as the sole basis for the application.  See 15 U.S.C. §1126(d).  However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as a basis for registration.

 

The Office presumes that an applicant is asserting Section 44(e) as a basis for registration when Section 44(d) is the sole basis in the application, as in the present case.  TMEP §§806.01(c), 1003.03.

 

An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must 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.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must submit a copy of the foreign registration from applicant’s country of origin.  If the foreign certificate of registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

A copy of foreign registration must consist of a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

 III.     Foreign Application Not from Country of Origin

 

The application specifies Trademark Act Section 44(d) as the sole basis for the application.  See 15 U.S.C. §1126(d).  The Office presumes that an applicant is asserting Section 44(e) as a basis for registration when Section 44(d) is the sole basis in the application, as in the present case.  TMEP §§806.01(c), 1003.03. 

 

To obtain registration under Section 44(e) based on a foreign registration that will issue from a foreign application relied on for priority, an applicant must establish that the country in which the foreign application was filed is its country of origin.  See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02, 1002.04.  However, it is unclear as to whether the foreign registration will issue from applicant’s country of origin because, although the application specifies that applicant is domiciled in the United States, the foreign application was filed in the European Community. 

 

When applicant submits the foreign registration, applicant will be required to establish that the country where the foreign application was filed is its country of origin by providing a written statement that applicant has a bona fide and effective industrial or commercial establishment in the European Community.  See TMEP §§1002.01, 1002.02, 1002.04.

 

If applicant cannot assert that the country in which the foreign application was filed is a country of origin, registration under Section 44(e) will be refused.  15 U.S.C. §1126(c); TMEP §1002.01.  In that case, applicant can delete the Section 44(e) basis and substitute Section 1(a) or 1(b), if applicant can satisfy all of the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(d); 37 C.F.R. §2.35(b); TMEP §§806.03, 1002.02.

 

If, as of the filing date of the U.S. application, the U.S. application satisfied the requirements of Section 44(d), applicant may retain the priority filing date without perfecting the Section 44(e) basis, as long as there remains a valid basis for registration under Section 1.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

 

If the applicant cannot meet the requirements set forth above, then the applicant may wish to amend the filing basis to add one of the following bases.  An application based on use of the mark in commerce must include the following:

 

(1)     The following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”

 

(2)     The date of first use of the mark anywhere on the goods or in connection with services;

 

(3)     The date of first use of the mark in commerce as a trademark or service mark;

 

(4)     One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce).  If a specimen was not submitted with the initial application, applicant must submit the following statement:  “The specimen was in use in commerce at least as early as the application filing date;” and

 

(5)     Verification, in an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33, of the above statements and dates of use. 

 

15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a); TMEP §806.01(a).

 

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

 

15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

  IV.     Significance of Wording in the Mark

 

Applicant must explain whether “UBIDYNE” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  Applicant must also explain whether this wording identifies a geographic place.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

     V.     Clarification of the Identification of Goods Required

 

The wording in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

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,” “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).

 

Applicant may adopt the following, if accurate:

 

International Class 009:         Telecommunications transmitters; telecommunications receivers, equipment, apparatus, and devices, namely, {indicate the common commercial name for the goods, e.g., telephones receivers, telecommunication cables, telecommunication switches}; telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols antennas; antenna arrays; aerials; antennas for wireless communications apparatus; electronic components for antennas and aerials, namely, {indicate the common commercial name for the goods, e.g., digital transmitters}.

 

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.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.

 

 

/Eli J. Hellman/

Trademark Examiner

United States Patent and Trademark Office

571.272.8276 (Phone)

571.273.8276 (Fax)

eli.hellman@uspto.gov

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 8/7/2008 FOR

APPLICATION SERIAL NO. 77454880

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77454880&doc_type=OOA&mail_date=20080807 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 8/7/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.