To: | CLARO S.A. (ipmiami@gtlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 78716760 - CLARO - 128237.01030 |
Sent: | 1/25/2018 5:07:37 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 78716760
MARK: CLARO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: CLARO S.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/25/2018
This Office action is in response to applicant’s communications filed on January 9, 2018.
The current application was suspended pending receipt of the foreign registration to perfect the Section 44(e) basis. Application has submitted an Amendment to Allege Use and indicated that it elects not to proceed to registration under Section 44(e). Accordingly, the application is withdrawn from suspension, and applicant must comply with the requirements listed below.
SUMMARY OF NEW ISSUES IN CURRENT ACTION TO WHICH APPLICANT MUST RESPOND:
· Requirement to Confirm Basis of Application
· Requirement for a New Drawing
· Requirement for an Acceptable Identification and Classification of Goods and Services
REQUIREMENT TO CONFIRM BASIS OF APPLICATION
Applicant has indicated that has elected not to proceed to registration under Section 44(e) and has filed an amendment to allege use (AAU) which has been accepted. Accordingly, applicant must affirmatively indicate that it would like the Section 44(e) basis to be deleted from the application so that the application will proceed forward based solely on Section 1(a).
REQUIREMENT FOR A NEW DRAWING
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.
For more information about drawings and instructions on how to submit a drawing, please visit the Drawing webpage.
The examining attorney apologizes for the fact that this issue was not raised earlier.
REQUIREMENT FOR AN ACCEPTABLE IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES – SPECIFIC WORDING ONLY
Specifically, the following wording is unacceptable and/or misclassified:
Class 9
call processors – This wording must be amended to clarify the nature of the goods, e.g., “digital signal processors,” “reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communication,” etc.
screens – It is unclear what is meant by “screens” – applicant must indicate the specific type of screens, e.g., “video screens.”
Class 42
telephone answering services – These services are properly classified in class 35 – and, it is noted that applicant also has them in class 35. Such wording must be deleted from the class 42 wording.
Applicant may adopt the following identification and classification, noting that the wording which should be deleted is in
strikethrough, while newly-added wording is in bold:
Class 9:
Telephone apparatus, telephone peripherals and accessories, namely, call processors in the nature of digital signal processors, fax machines, intercoms, mobile phones, modems, pagers, telephone answering machines, two-way radios, video conferencing phones, cameras and video screens, telephone cases, telephone chargers, mobile telephone batteries
Class 35 (acceptable):
Telecommunications network management services, namely, the operation and administration of telecommunication systems and networks for others; telephone answering services
Class 36 (acceptable):
Telephone calling card services; telephone information services featuring information regarding telephone calling card services
Class 37 (acceptable):
Maintenance of telecommunications networks; telephone installation and repair services; telephone information services featuring information regarding maintenance of telecommunication networks and telephone installation and repair
Class 38 (acceptable):
Telecommunication services, namely, telecommunications gateway services; telephone communications services, namely, cellular telephone services, local and long distance telephone services, mobile telephone communication services, telephone information services featuring information regarding telephone communication services
Class 42:
Telecommunications network design and planning; monitoring telephone calls from subscribers and notifying emergency facilities, telephone answering services
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. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a). In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name. See TMEP §1402.03(a).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/Susan K. Lawrence/
Susan Kastriner Lawrence
Trademark Examining Attorney
Law Office 116, USPTO
571-272-9186, sue.lawrence@uspto.gov
(email f
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.