Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/19/2010

 

 

This Office action is in response to applicant’s communication filed on June 28, 2010.

 

REFUSAL CONTINUED AND MAINTAINED

 

Applicant has requested withdrawal of the refusal to register on the grounds that registrant Hi Sec International and applicant Group 4 Technology Limited constitute a single source.  Applicant has not provided any explanation or evidence supporting this claim, however.  Therefore, the refusal citing U.S. Registration Nos. 3179898 and 3179897 must be continued and maintained, pending a showing of how the two separate entities constitute a single source. 

 

Unity of Control and Single Source

A legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.”  That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and a “unity of control” over the use of the trademarks and/or service marks.  See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §§1201.03, 1201.07.

 

Unity of control is presumed in instances where, absent contradictory evidence, one party owns all of another entity, or substantially all of another entity, and asserts control over the activities of the other entity.  Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another.  See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)-(b)(ii).

 

However, in most other situations, additional evidence is required to show unity of control.  For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source.  See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii). 

 

Therefore, applicant must provide a verified statement explaining the nature of the legal relationship between the parties.  If neither party owns all or substantially all of the other party, applicant must also provide a detailed written explanation and any documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “unity of control” over the use of the trademarks and/or service marks.  The explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1).  However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified.  TMEP §1201.07(b)(i).

 

AMENDED IDENTIFICATION OF GOODS

 

The proposed amendment to the identification cannot be accepted because the following wording refers to goods that are not within the scope of the identification that was set forth in the application, as amended on June 28, 2010:  “Electric and electronic apparatus and instruments, namely, digital video recording and storage apparatus and instruments, namely blank DVD's, blank CDs, optical disc drives and parts and fittings thereof.”  See 37 C.F.R. §2.71(a). 

 

This wording is beyond the scope of the amended application because applicant limited these items to goods related to security and access control systems.  The amended language contains no such limitation.

 

Identifications 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.  Id.; see TMEP §§1402.06 et seq., 1402.07(a).  Therefore, this wording should be amended to “electric and electronic apparatus and instruments, namely, digital video recording and storage apparatus and instruments, namely blank DVD's blank CDs, optical disc drives and parts and fittings thereof, all for use in security and access control systems.”

 

For the same reason, the wording “electric and electric and electronic video surveillance installations” without a limitation is beyond the scope of the original description.  Applicant may amend the wording to “electric and electronic video surveillance installations for use in security and access control systems. 

 

The wording “incorporating computer software” in the identification of goods is indefinite and must be clarified because the function of the software is not stated.  See TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:  “Integrated access control and alarm monitoring systems comprised of computer access control and security software, computer hardware, and closed circuit televisions.”

 

The wording “chronographs” in the identification of goods is indefinite and must be clarified because it identifies goods in classes 009 and 014.  See TMEP §1402.01.  Applicant must state the use for the goods.

 

Applicant may substitute the following wording, if accurate:  In CLASS 009:  “Chronographs for use as specialized time recording apparatuses” or in CLASS 014:  “Chrongraphs for use as timepieces.”

 

The “chronometers” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 014 and add this class to the application or delete “chronometers” from the application.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “computer software and hardware for guard and security guard control” in the identification of goods is indefinite and must be clarified because the function of the software is unclear.  See TMEP §1402.01.  The wording is also beyond the scope of the original wording because the application limited the software and hardware to the field of “specialist guard and security guard control.” 

 

Applicant may substitute the following wording, if accurate:  “Computer hardware and software for use in monitoring access to facilities for use by specialist guard and security guard control systems”

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and 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 et seq.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least two classes; however, the fees submitted are sufficient for only one class(es).  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 number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

The filing fees for adding classes to an application are as follows:

 

(1)  $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); 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, 1403.02(c).

 

 

 

 

/rservance/

Renee Servance

Trademark Attorney

Law Office 111

Phone:  571-272-6596   Fax:  571-273-6596

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77836953) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 7/19/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77836953&doc_type=OOA&mail_date=20100719 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 7/19/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.