UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79/084027
MARK: SECURITAS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: Securitas AB
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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.
INTERNATIONAL REGISTRATION NO. 0883424
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 if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and 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 who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Refusal—The Mark Is Merely Descriptive
The applicant applied to register the mark SECURITAS for:
“Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes of metal; safes; goods of common metal, not included in other classes; ores; safes and cash boxes; security locks and barriers and fencing; signs, seals and plaquettes for safety systems; gates of metal and doors of metal; grilles; locks; key tubes,”
“Scientific, electric and electronic apparatus and instruments not included in other classes; photographic, measuring, signalling, checking (supervision), life-saving and teaching apparatus, and instruments; fire-extinguishing apparatus; electric and electronic alarm installations, alarm clocks, central alarm posts and stations; electric and electronic apparatus and installations for security and access supervision; apparatus for monitoring and controlling industrial processes; apparatus for recording time and presence; cameras for closed-circuit television; apparatus for access security and supervision; electric and electronic apparatus for recording, processing, transmission, storage and production of data; checking (supervision) and data receiving apparatus; delay mechanisms, included in this class; ignition mechanisms not included in other classes; batteries for lighting; electronic security systems; electronic keys; remote controls; security systems which continuously monitor the protected transport of securities; security systems which enable abnormal situations to be detected and, where appropriate, the securities to be destroyed or rendered unusable; systems for providing protection during the transport and storage of securities; systems for recording and locating vehicles which are transporting securities; computer software,”
“Advertising; business management; business administration; office functions; general management services; advertising; placement of personnel employed to protect against theft, fire and other damage; telephone answering services; consumer information online in relation to alarm and guard services; receptionist service; accounting services,”
“Safekeeping of securities and valuables in safes; insurance underwriting; financial affairs; monetary affairs; real-estate affairs; checking the amount of transported cash; rental of safes; leasing of alarm and security devices, leasing of alarms and safety products,”
“Construction, installation, repair and maintenance of electric and electronic apparatus and installations, security apparatus, alarm apparatus, devices and installations, central alarm stations and security systems, apparatus and installations, cash dispensers, identification material; alarm systems assembly; assembly, maintenance and repair of protection, alarm and identification material and of all preventive and protective equipment necessary for security in all areas; updating and maintenance of computer hardware and security systems,”
“Transport and storage; towing by motor vehicles; transport of persons and goods; luggage transport; guarded transport of coins, money and securities and other documents of value and the transport of works of art, jewellery, furs (clothing), precious metals and common metals and valuable raw materials; vehicle rental, including rental of material suitable for the guarded transport of persons and goods; personal delivery of documents and goods; transport of money and valuables; mail delivery; courier services; delivery services, night and day; transport, namely accompanying and escorting suspects, prisoners and persons being held in pre-trial detention from prisons, remand centres, police stations and other similar institutions to court and vice versa,”
“Courses; seminars; instruction and providing of training; providing of security training, training sessions and instruction; instruction and providing of training in the field of security by courses and seminars; instruction and providing of training for loss prevention; rental of video cassette recorders and video cameras.”
“Design, updating and maintenance of computer software; research concerning legal matters; technical consultancy concerning security systems; engineering, chemistry and physics services; drawing up of expert reports by engineers; research and development in the field of the above services; consultancy and information in the field of the above services,”
“Personal body guarding; detective agencies; night guards; opening of security locks; guards; security consultancy; monitoring of burglar and security alarms; computerised monitoring systems related to burglary; computerised security services for business setup; computerised security services for private organisations; computerised security services for corporate organisations; computerised security services for household setup; aircraft security services; identification services, namely identifying people; consultation services related to safety; advisory services related to fire safety; rental of alarms and safety products; monitoring of industrial plants; monitoring of alarms at alarm centres; security services for the protection of property and individuals; surveillance, including taking photographs and making films.”
Here, applicant’s mark is SECURITAS, which is the Latin equivalent of “SECURITY.” Because applicant’s identification of goods and services identifies several explicitly security-related goods and services (see highlighted identification above) the use of a foreign equivalent of the term “SECURITY” is merely descriptive of the goods and services. See attached translations of “securitas.” See also the applications prior registrations disclaiming this term as descriptive in this context.
For the foregoing reasons, the mark is refused registration under Section 2(e)(1). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
Indefinite Identification of Goods and Services
The identification of goods and services is indefinite. 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 “apparatus” “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. See TMEP §§1402.01, 1402.03(a).
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. If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).
The applicant must specify that the goods in Class 6 are of metal. In Class 9, the wording “not included in other classes” is indefinite as the application must specify each item
The applicant must delete all parenthesis. The examining attorney has deleted the following repetitive wording: advertising
Applicant may adopt the following identification, if accurate:
Class 6
Common metals and their alloys; metal building materials namely [specify materials]; transportable buildings of metal; materials of metal for railway tracks namely [specify materials]; non-electric cables and wires of common metal; ironmongery namely small items of metal hardware in the nature of [specify hardware]; pipes of metal; safes; goods of common metal namely [specify goods]; ores namely [specify type]; safes and cash boxes; metal security locks and metal barriers and metal fencing; metal signs, seals and plaquettes for safety systems; gates of metal and doors of metal; grilles; metal locks; metal key tubes
Class 9
Scientific, electric and electronic apparatus and instruments namely [specify the common commercial name of each apparatus and instrument]; photographic, measuring, signalling, checking and supervision, life-saving and teaching apparatus, and instruments namely [specify the common commercial name of each apparatus and instrument]; fire-extinguishing apparatus; electric and electronic alarm installations, alarm clocks, central alarm posts and stations; electric and electronic apparatus and installations for security and access supervision namely [specify common commercial name of goods]; apparatus for monitoring and controlling industrial processes namely [specify common commercial name of apparatus]; apparatus for recording time and presence; cameras for closed-circuit television; apparatus for access security and supervision namely [specify common commercial name of apparatus]; electric and electronic apparatus for recording, processing, transmission, storage and production of data; checking and supervision and data receiving apparatus namely [specify common commercial name of apparatus]; delay mechanisms for use in [specify field of use for mechanisms]; ignition mechanisms for use in [specify field of use for mechanisms]; batteries for lighting; electronic security systems comprised of [specify system components]; electronic keys in the nature of [specify type, e.g. electronic key cards]; remote controls for [specify particular device]; security systems which continuously monitor the protected transport of securities comprised of [specify system components]; security systems which enable abnormal situations to be detected and, where appropriate, the securities to be destroyed or rendered unusable comprised of [specify system components]; systems for providing protection during the transport and storage of securities comprised of [specify system components]; systems for recording and locating vehicles which are transporting securities comprised of [specify system components]; computer software for [specify functions and area of use for software]
Class 35
Advertising; business management; business administration; office functions; general management services namely [specify field, e.g. general business management]; office management; placement of personnel employed to protect against theft, fire and other damage; telephone answering services; consumer information online in relation to alarm and guard services; receptionist service; accounting services
Class 36
Safekeeping of securities and valuables in safes; insurance underwriting; financial affairs namely [specify financial service provided]; monetary affairs namely [specify monetary service provided]; real-estate affairs namely [specify monetary service provided]; checking the amount of transported cash; rental of safes; leasing of alarm and security devices, leasing of alarms and safety products
Class 37
Construction, installation, repair and maintenance of electric and electronic apparatus and installations, security apparatus, alarm apparatus, devices and installations, central alarm stations and security systems, apparatus and installations, cash dispensers, identification material; alarm systems assembly; assembly, maintenance and repair of protection, alarm and identification material and of all preventive and protective equipment necessary for security in all areas; updating and maintenance of computer hardware and security systems
Class 39
Transport and storage of [specify “of goods”]; towing by motor vehicles; transport of persons and goods; luggage transport; guarded transport of coins, money and securities and other documents of value and the transport of works of art, jewellery, furs being clothing, precious metals and common metals and valuable raw materials; vehicle rental, including rental of material suitable for the guarded transport of persons and goods; personal delivery of documents and goods; transport of money and valuables; mail delivery; courier services; delivery services, night and day; transport, namely accompanying and escorting suspects, prisoners and persons being held in pre-trial detention from prisons, remand centres, police stations and other similar institutions to court and vice versa
Class 41
Educational services, namely Courses in the field of [specify subject matter]; seminars in the field of [specify subject matter]; instruction and providing of training in the field of [specify subject matter]; providing of security training, training sessions and instruction; instruction and providing of training in the field of security by courses and seminars; instruction and providing of training for loss prevention; rental of video cassette recorders and video cameras
Class 42
Design, updating and maintenance of computer software; research concerning legal matters; technical consultancy concerning security systems; engineering, chemistry and physics services; drawing up of expert reports by engineers; research and development in the field of the above services; consultancy and information in the field of the above services
Class 45
Personal body guarding; detective agencies; night guards; opening of security locks; guards; security consultancy; monitoring of burglar and security alarms; providing security services featuring computerised monitoring systems related to burglary; computerised security services for business setup; computerised security services for private organisations; computerised security services for corporate organisations; computerised security services for household setup; aircraft security services; identification services, namely identifying people for [specify field eg security purposes]; consultation services related to safety; advisory services related to fire safety; rental of alarms and safety products; monitoring of industrial plants; monitoring of alarms at alarm centres; security services for the protection of property and individuals; surveillance, including taking photographs and making films
/Brian Neville/
Trademark Examining Attorney
Law Office 114
(571) 272 – 9203
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.