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:

 

 

INTERNATIONAL REGISTRATION NO. 0959540.

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)     Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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.

 

Applicant must respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS

 

Applicant has identified its goods as set forth below.  The terms appearing in bold letters in the identification of goods are unacceptable because they are indefinite, overly broad and could include goods in multiple classes as more fully explained in the parenthetical information following each listing.

 

Class 9:            Projectors{indefinite – specify the types of projectors with particularity, e.g., movie projectors, photographic projectors, slide projectors, video projectors}, monitors{indefinite – specify the types of monitors with particularity for proper classification in Class 9, e.g., computer monitors, baby monitors, television monitors, video monitors}, displays{indefinite – specify the types of displays with particularity, e.g., electric luminescent display panels, electrophoretic displays, head-mounted video displays, flat panel display screens}, screens{indefinite – specify the types of screen with particularity for proper classification in Class 9, e.g., fluorescent screens, projection screens, video screens, flat panel display screens}, electronic visualization devices{indefinite – applicant must clarify the nature of the goods and identify the goods with particularity, e.g., video screens, video projectors} and software{indefinite – applicant must specify the function of the software with particularity and the field of use, if applicable, e.g., computer graphics software, software for processing images, graphics and text} for professional application; graphic generators{indefinite – clarify the nature of the goods, e.g., video monitors, video screens}, computers, controllers for managing, integrating and optimizing the use of visualization equipment in the workflow{indefinite – applicant must specify the goods with particularity, e.g., computer software controllers, controllers comprised of computer hardware and software}; (3D) medical imaging software{applicant must remove the parentheses and incorporate this material into the identification of goods}, content scheduling software{indefinite – applicant must specify the field of use of the software for clarification of the function of the software}, display and projector control and management software; human machine interface development software.

 

Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product or services and the intended consumers as well as the main purpose and intended uses.

 

Applicant’s identification of goods/services must be as clear, specific, definite and concise as possible.  Applicant is advised to use a semi colon to separate the goods or services, e.g., “restaurants; hotels”, and a comma when setting out a list of related items, e.g., “clothing, namely, pants, shirts.”  Please note the examining attorney’s amendments to the punctuation below.

 

Note that in responding to this action, applicant must remove any parenthesis, brackets, braces, or terms such as “e.g.” from the identification of goods and/or services and incorporate any applicable illustrative or parenthetical information into the description.  Generally, parentheses, braces and brackets should not be used in identifications.  Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.

 

Additionally, applicant must list the goods and/or services separated by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

Applicant may adopt the following identification of goods, if accurate:

 

Class 9:            Projectors, namely, {specify the types, e.g., movie projectors, photographic projectors, slide projectors, video projectors}; monitors, namely, {specify the types, e.g., computer monitors, baby monitors, television monitors, video monitors}; displays, namely, {specify the types, e.g., electric luminescent display panels, electrophoretic displays, head-mounted video displays, flat panel display screens}; screens, namely, {specify the types, e.g., fluorescent screens, projection screens, video screens, flat panel display screens}; electronic visualization devices, namely, {clarify the goods, e.g., video screens, video projectors}; and software for {specify the function} in the field of {specify the field of use}, all of the foregoing for professional application; graphic generators, namely, {clarify the goods, e.g., video monitors, video screens}; computers; controllers comprised of computer hardware and software for managing, integrating and optimizing the use of visualization equipment in the workflow; 3D medical imaging software; content scheduling software for scheduling {specify the type of content}; display and projector control and management software; human machine interface development software

 

TMEP §§1402.01 and 1402.03.

 

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.

 

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b).

 

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.

 

CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS REQUIRED

 

If applicant is the owner of U.S. Registration Nos. 2349324 and 1392234, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2349324 and 1392234.

 

TRANSLATION OF THE MARK REQUIRED

 

Applicant must submit an English translation of the mark.  TMEP §809; see 37 C.F.R. §§2.32(a), 2.61(b).  The following translation statement is suggested:  “The English translation of “BARCO” in the mark is “BOAT”.”  TMEP §809.02.  See attached.

 

SIGNIFICANCE INQUIRY

 

Applicant must specify whether “BARCO” has any significance in the electronics trade or industry, or any geographical significance.  37 C.F.R. §2.61(b).

 

DESCRIPTION OF THE MARK REQUIRED

 

Applicant must submit a concise description of the mark.  37 C.F.R. §2.37; see TMEP §§808 et seq.  The following is suggested:

 

The mark consists of the stylized text “BARCO” where the “O” is represented by the image of a stylized eye.

 

ADVISORY – TRADEMARK COUNSEL RECOMMENDED

 

Applicant may wish to hire a trademark attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

Please be advised that the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)     Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). 

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

GUIDELINES FOR RESPONSE TO THIS ACTION

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

 

 

/Charlotte K. Corwin/

Charlotte Klein Corwin

Trademark Examining Attorney

Law Office 117

Phone - (571) 270-1532

Fax - (571) 270-2532

 

 

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.